Shire Development LLC v. LCS Group, LLC

Denying a request from patent owner’s counsel to withdraw from an inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) refused to allow the inventor to proceed pro se because the real party in interest was a juristic entity.  Shire Development LLC v. LCS Group, LLC, Case No. IPR2014-00739 (PTAB, Nov. 21, 2014) (Green, APJ).

LCS Group, LLC, a juristic entity, was designated as the patent owner and real party in interest in the Patent Owner’s Mandatory Notices and represented by counsel in the IPR proceeding. The inventor of the patent at issue, ostensibly with patent owner’s approval, wanted to represent himself in the proceeding. Counsel’s withdrawal from an IPR proceeding requires authorization from the Board. 37 C.F.R. § 42.10(e). The Board refused to allow patent owner’s counsel to withdraw because the patent owner and real party-in interest was a juristic entity.

The Board also indicated that the request may not succeed even if the patent owner were to assign ownership back to the inventor because a mere reassignment of ownership may not be sufficient to establish the inventor as the only real party in interest, citing Case No. IPR2013-00010 to assert that patent ownership is not the proper test for determining the real party in interest.

Suggesting its reluctance to allow pro se representation notwithstanding the issue of real party in interest, the Board noted that pro se representation could carry significant risk in view of the complex and very technical nature of the proceedings.