In a notable decision, the Patent Trial and Appeal Board (PTAB) has dismissed a patent owner’s claim that a coherence of activities hinting at an undercover plan was sufficient to conclude that a petitioner’s inter partes review (IPR) petition should be rejected as it failed to name a time-barred real party-in-interest (RPI). The surprising conclusion came after the board evaluated the provided evidence and found it to be unsatisfactory in affirming a premeditated scheme as alleged.
Inter partes reviews are a legal process used to contest the validity of an existing patent and involve third-party petitioners. The petitioner in this case was accused by the patent owner of scheming to evade the statutory one-year time bar that prevents an unsuccessful patent challenger in district court from trying again before the PTAB.
The patent owner’s contention was built on a number of coincidences that, in their view, suggested a deliberate attempt to sidestep the time bar. These include overlapping but minimal legal representation, different accused products, and an absence of a prior relationship between parties.
However, the PTAB ultimately determined the evidence put forth, while overlapping, attested to minimal legal representation, different defendants and accused products, alongside an absence of a pre-existing relationship between the accused parties. The board concluded these points of argument did not substantiate the accusation that deliberate efforts were made to work around the IPR time bar, thus asserting that the Petitioner had adequately met its burden.
For a detailed reading into the case and its implications, refer to the full case analysis provided by
Akin Gump Strauss Hauer & Feld LLP.