Drilling Down: Real Parties in Interest and Time Bars - Patents: Post-Grant Podcast
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
ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS, INC. Before Newman, Lourie, and Stoll - Summary: Termination decision made by the Board in part based on the time-bar was “intimately related” to the institution...more
Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for the third installment of their podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper...more
[co-author: Kathleen Wills] 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...more
Acoustic sued Itron for infringement of its patent, and the two parties settled, with Itron taking a license to the patent. Acoustic later sued Silver Spring for infringement. Silver Spring petitioned for inter partes review...more
[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more
The U.S. Patent and Trademark Office Patent Trial and Appeal Board has elevated three panel decisions to precedential this month. RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020)...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
A November 17, 2020 decision by the Federal Circuit has extended the Supreme Court’s April 2020 decision in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020), which held that institution decisions...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
In the first half of 2020, several notable decisions further shaped the course of patent law, with rulings from the Supreme Court and Federal Circuit impacting PTAB proceedings, as described below...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
Last year, this blog discussed various strategic considerations for litigants seeking declarations of invalidity in district court actions to avoid being precluded from also seeking inter partes or other post-grant review...more
The PTAB designated as precedential a January 2019 panel decision relating to the bar on instituting an IPR under 35 U.S.C. § 315(a)(1) when the petitioner previously filed a civil action challenging the validity of the...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
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 Federal Circuit Court of Appeals recently held that the Section 315(b) time-bar analysis must assess privity and real-party-in-interest relationships that arise after the filing of an inter partes review petition;...more