The Briefing: Failure to Disclose Relationship with Real Party in Interest Results in Serious Sanctions
Podcast: The Briefing - Failure to Disclose Relationship with Real Party in Interest Results in Serious Sanctions
Drilling Down: Real Parties in Interest and Time Bars - Patents: Post-Grant Podcast
The US Patent & Trademark Office Director partially vacated the Patent Trial & Appeal Board’s real-party-in-interest (RPI) determination because that determination was not necessary to resolve the underlying proceeding....more
Atlanta Gas petitioned for inter partes review of Bennett’s ’029 patent. The Board initially rejected Bennett’s argument that Atlanta Gas was time barred from petitioning for inter partes review under 35 U.S.C. § 315(b) and...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
In RPX Corp. v. Applications in Internet Time LLC, the Patent Trial and Appeal Board (“PTAB”) held in a precedential opinion that three inter partes reviews (“IPRs”) were time-barred under 35 U.S.C. § 315(b) because the...more
Throughout the Patent Trial and Appeal Board’s (“PTAB”) history, patent owners have tried to leverage a petitioner’s alleged failure to name all real parties-in-interest (“RPIs”) as a way to achieve denial of an inter partes...more
Recently, we reported about the Supreme Court’s decision holding that the AIA’s “no appeal” provision in 35 U.S.C. § 314(d) means that the PTAB’s decision not to institute IPR because a petition is time barred under 35 U.S.C....more
ESIP SERIES 2, LLC V. PUZHEN LIFE USA, LLC - Before Reyna, Lourie, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: The PTAB’s determination that an IPR petition identifies all real parties in...more
In Acoustic Technology v. Itron Networked Solutions, the Federal Circuit was faced with a situation in which the Petitioner’s real party-in-interest/privy changed after institution, although the change was in the works before...more
In two related decisions, the Federal Circuit held that the Patent Owner, Acoustic Technology, Inc. (“Acoustic”) waived its time-bar challenges under 35 U.S.C. § 315(b) (“Section 315(b)”) by failing to assert them in the IPR...more
Semiconductor Components, doing business as ON Semiconductor, petitioned for inter partes review (IPR) of several claims of Power Integration’s U.S. Patent No. 6,212,079. The Patent Trial and Appeal Board (PTAB) instituted...more
Time-bar Challenges to IPR under Section 315(b) Can Be Waived - ACOUSTIC TECHNOLOGY INC. v. ITRON NETWORKED SOLUTIONS INC (NOS. 2019-1059 & 2019-1060) - ACOUSTIC TECHNOLOGY INC. v. ITRON NETWORKED SOLUTIONS INC (NO....more
To institute an inter partes review (IPR), the petition requesting the proceeding must be filed within one year of the petitioner or real party in interest (RPI) receiving a complaint alleging patent infringement. 35 U.S.C. §...more
The PTAB has been very active in designating decisions precedential and informative in 2019. Here’s a recap of designations so far...more
On August 29, 2019, the Patent Trial and Appeal Board (PTAB) designated as precedential its January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc. In Cisco, the PTAB held that 35 U.S.C. § 315(a)(1) bars...more
In a recent appeal of two inter partes review (“IPR”) decisions from the Patent Trial and Appeal Board (“Board”), The Court of Appeals for the Federal Circuit (“CAFC”) held that the Board abused its discretion in denying...more
Addressing whether the Patent Trial and Appeal Board (PTAB) is permitted to excuse an inter partes review (IPR) petitioner’s late identification of additional real-parties-in-interest (RPIs), the US Court of Appeals for the...more
Addressing for the first time whether real-parties-in-interest (RPIs) are evaluated at the time a petition is filed or at the time of institution for purposes of § 315(b), the US Court of Appeals for the Federal Circuit held...more
On June 24, 2019, the U.S. Supreme Court granted the petition for certiorari in Dex Media Inc. v. Click-to-Call Technologies, LP. Next term, the Court will determine whether 35 U.S.C. § 314(d) permits appeal of the U.S....more
The Federal Circuit vacated a PTAB decision invalidating claims of U.S. Patent No. 6,212,079 (the “’079 Patent”) on the grounds that the inter partes review (IPR) petition was time-barred as a result of a merger between the...more
Overturning prior PTAB precedent, the Federal Circuit has now held that post-facto business mergers that create a new real-party-in-interest (“RPI”) trigger the one-year bar date for filing IPR petitions on patents asserted...more
In Power Integrations v. Semiconductor Components, the Federal Circuit ruled that privy and real-party-in-interest (RPI) relationships arising after a petition is filed but before institution may bar institution under section...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
POWER INTEGRATIONS, INC v. SEMICONDUCTOR COMPONENTS - Before Prost, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: An IPR is time-barred under 35 U.S.C. § 315(b) if, at the time of...more
Federal Circuit clarifies that a post-filing change in RPI status can trigger the § 315(b) time-bar and that there are exceptions to issue preclusion in IPR appeals - On June 13, 2019, the Court of Appeals for the Federal...more
In an order designated precedential, the PTAB terminated an instituted IPR proceeding after the petitioner failed to establish that no real parties in interest (“RPI”) or privies had been served with a complaint more than one...more