UPDATE – Back From the Dead: Misidentification of RPI Does Not Necessarily Lead to End of IPR

Authored by Michelle Carniaux and Michael E. Sander

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.

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Say R.I.P. to Your IPR: Incorrect Identification of Real Party in Interest Leads to Loss of Petition Filing Date

Authored by Michelle Carniaux and Michael E. Sander

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.

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