July 27, 2018Newsletter

This Week at the Board - July 27, 2018

Federal Circuit Vacates and Remands IPR Decisions So That Board May Reconsider Real Party In Interest Questions

In Fed. Cir. 2017-1698, the Federal Circuit vacated and remanded three IPR decisions back to the Board, finding that the Board failed to fully consider questions regarding the real party in interest in the IPRs.  In its decision, the Federal Circuit addressed §315(b), noting that the term “real party in interest” is not defined in the AIA.  The Federal Circuit thus looked to the common law meaning, noting that under common law a real party in interest is one who from a “practical and equitable standpoint” will benefit from the redress that the chosen tribunal might provide.  The Federal Circuit found that the Board failed to properly use the expansive common law meaning, and to consider whether (“Salesforce”), a client of the petitioner RPX (an organization that includes paying company members and is known for challenging patents), should have been named a real party in interest given the relationship between RPX and Salesforce.        

A link to the decision is found here.


Federal Circuit Finds That Tribal Immunity Does Not Apply to IPRs

In Fed. Cir. 2018-1638, the Federal Circuit found that an IPR is more like an agency enforcement action than a civil suit brought by a private party, and thus tribal immunity is not implicated.  For example, the Federal Circuit noted that the Director has broad discretion on whether to institute a review.  Additionally, the Federal Circuit noted that the role of the parties in an IPR suggests immunity does not apply, because once an IPR has been instituted the Board may choose to continue review even if the petitioner chooses not to participate.  Additionally, the Federal Circuit noted that UPSTO procedures in an IPR do not mirror the Federal Rules of Civil Procedure.  Finally, the Federal Circuit noted that while the USPTO has the authority to conduct reexamination proceedings that are more inquisitorial and less adjudicatory than an IPR, this does not mean that an IPR is necessarily a proceeding in which Congress contemplated tribal immunity to apply. 

A link to the decision is found here.


Board Denies Request For Amended Preliminary Response

In IPR2018-00559, the Patent Owner requested authorization to file an amended Preliminary Response and declaration after realizing that its positions in the Preliminary Response were contrary to litigation positions it was taking in district court proceedings.  The Board denied the request, noting that the statutory deadline for an institution decision was less than month away, and that at this late stage the filing of an amended Preliminary Response and supporting declaration would introduce delay.  The Board noted that if the Patent Owner was concerned about maintaining consistent arguments, the Patent Owner could simply withdraw certain arguments in the Preliminary Response or even withdraw the Preliminary Response in its entirety.

A link to the decision is found here.

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