The issues of privity, real parties in interest (RPI), and estoppel are becoming ever more important in the post-grant context. The recent Federal Circuit decision in Applications in Internet Time (AIT) v. RPX, an appeal from a PTAB inter partes review decision, found that the PTAB took an “impermissibly shallow” look at evidence presented by the patent owner about the relationship between the petitioner and another party. Our panel of experts will discuss how this decision is a significant addition to the Federal Circuit’s oversight of the PTAB and what the resulting implications are for practitioners.
They will also discuss the relationship of these issues with the time bar under Section 315(b) and the ongoing impact of the en banc Federal Circuit decision in Wi-Fi One v. Broadcom Corporation. That decision held “that time-bar determinations under §315(b) are reviewable by this court,” reversing the original Federal Circuit panel that had cited the Court’s holding in Achates that such judicial review was prohibited.
Questions of RPI and privity are woven throughout the AIA. Its estoppel provisions involving district court and ITC litigation apply not only to entities that are directly involved in adversarial proceedings, but also to privies. Likewise, in many IPRs, questions of RPI and/or privity are not limited to the business model of defensive groups, but are also raised by common fact patterns in supplier-customer relationships, indemnities, mergers & acquisitions, and use of the same counsel.
Our panel includes a PTAB specialist with extensive experience representing patent owners, a veteran patent litigator, and an appellate lawyer who recently represented a client at the Supreme Court in a case that changed PTAB practice. They will discuss:
• How patent owners can take advantage of RPX decision and what changes may it require in the business models of some frequent IPR petitioners
• The options for patent owners who previously lost on privity issues at the PTAB or were denied discovery
• The widely reported expectation that Wi-Fi One will file a petition for certiorari with the U.S. Supreme Court – as well as its efforts before the PTAB to raise the issue of a relationship alleged to be subject to the 315(b) time bar.
- Gregory Castanias, Jones Day
- Craig Countryman, Fish & Richardson P.C
- Eldora Ellison, Sterne Kessler Goldstein & Fox, PLLC