Failing to identify all real parties of interest in a petition can have disastrous consequences for an IPR petitioner. Just days after we discussed a case where the Board found that a petitioner identified, in substance, all real parties in interest despite omitting an entity who should have been identified, it appears that the petitioner in another, separate proceeding had a less fortunate fate.
In an earlier post, we discussed the Patent Trial and Appeal Board’s (“the Board”) Idle Free decision, which explained the high hurdle for a successful patentability argument in a Motion to Amend Claims. See IPR2012-00027, No. 26, Order (P.T.A.B. June 11, 2013).
We previously blogged about Iron Dome, a company which allegedly demands transferable patent licenses from patent assertion entities (“PAEs”) in exchange for forgoing their right to file an inter partes review petition. As discussed, one of the PAEs subject to this strategy, Chinook Licensing DE LLC, was not too happy, and sued Iron Dome on a variety of claims, including tortious interference with business relations, violations of the RICO Act, mail fraud, wire fraud, and conspiracy.
In a previous blog post, we discussed challenges to IPR petitions filed by Valeo based on the failure to list all real parties in interest in their petitions:
In the petitions, the petitioners identified a number of real parties in interest, including “Valeo, Inc.” However, more than seven months prior to the petitions were filed, “Valeo, Inc.” ceased to exist as a result of corporate restructuring (a merger and name change). Valeo Inc.’s successor in interest, “Valeo North America, Inc.” was not named as a real party in interest in the petitions.
The issue regarding properly naming all real parties in interest in an IPR petition has been raised quite a number of times before the Board. In most cases, a patent owner raised the issue because at the time the IPR petition was filed, an entity who the patent owner alleged was a real party in interest was outside the one year statutory window for filing the petition. Thus, the patent owner sought to either have the petition denied, or an instituted trial terminated. See 35 U.S.C. § 315(b) (“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”). A hot topic is what happens if the party you leave out or incorrectly identify would not have been time barred at the time of the filing of the IPR. Can you correct the petition to add or change the party? The answer is yes – but you will lose your filing date, which may mean that your petition is now time barred as a result of a new filing date.