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Real Party in Interest Patents

Seyfarth Shaw LLP

Beyond the 100 Mile Rule: Court of Appeal Affirms District Court’s Power to Compel Attendance of Distant Witnesses and Unveil...

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What is the range of a federal district court’s power to compel a nonparty’s attendance at a hearing? Every practicing litigator knows the answer—“within 100 miles of where the person resides, is employed, or regularly...more

Strafford

[Webinar] Patent Inventorship: Best Practices for Determination and Correction - Distinguishing Between Inventor and Contributor;...

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This CLE course will guide patent counsel in identifying and determining inventorship and offer best practices for correcting errors regarding inventorship. Our experienced panel will provide perspectives gained from working...more

Weintraub Tobin

The Briefing: Failure to Disclose Relationship with Real Party in Interest Results in Serious Sanctions

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Failure to disclose certain relationships with a third party may result in significant consequences from the court. Scott Hervey and Eric Caligiuri talk about this on this episode of The Briefing....more

Weintraub Tobin

Podcast: The Briefing - Failure to Disclose Relationship with Real Party in Interest Results in Serious Sanctions

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Failure to disclose certain relationships with a third party may result in significant consequences from the court. Scott Hervey and Eric Caligiuri talk about this on this episode of The Briefing....more

Jones Day

Customer/Manufacturer Relationship Insufficient To Bar

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Recently, the PTAB held that Samsung Electronics Co. Ltd. (“Petitioner”), met its burden in showing that a third party (the “Third Party”) was neither a real party-in-interest (“RPI”) nor in privity with Petitioner....more

Jones Day

Director Demonstrates Ability to Review Non-Dispositive PTAB Determinations

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On May 16, 2023, Director Katherine Vidal vacated a portion of a final written decision regarding real parties in interest (“RPIs”) in Unified Patents, LLC v. Memory Web, LLC, IPR2021-01413. Director Vidal held that the...more

McDermott Will & Emery

No Need for Unnecessary RPI Determinations

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The US Patent & Trademark Office Director partially vacated the Patent Trial & Appeal Board’s real-party-in-interest (RPI) determination because that determination was not necessary to resolve the underlying proceeding....more

Jones Day

Director Review Orders Additional Discovery On Time Bar-RPI Issue

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In Samsung Electronics Co., Ltd. v. Netlist, Inc., the PTAB determined that a time-barred third party was not a real party in interest (“RPI”) and granted institution. IPR2022-00615, Paper 20 (Oct. 19, 2022) at 19...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Atlanta Gas Light Co. v. Bennett Regulator Guards,...

Atlanta Gas petitioned for inter partes review of Bennett’s ’029 patent. The Board initially rejected Bennett’s argument that Atlanta Gas was time barred from petitioning for inter partes review under 35 U.S.C. § 315(b) and...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Fish & Richardson

Judge Connolly’s New Standing Order Requiring Disclosure Behind Patent Assertion Entities Is Showing It Has Teeth

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On August 17, 2022, Chief Judge Colm F. Connolly of the District of Delaware issued an order in which he questioned the sufficiency of the plaintiff’s disclosure of financially interested parties in Longbeam Technologies LLC....more

Jones Day

Appeal of IPR Termination Dismissed by Split Federal Circuit Panel

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The Federal Circuit, in Atlanta Gas Light Co. v. Bennett Regul. Guards, Inc., 21-1759, in an opinion by Judge STOLL, dismissed Atlanta Gas’s appeal for lack of jurisdiction. In this case, Atlanta Gas filed an IPR which was...more

Knobbe Martens

Board Has Final Say on Time Bar Decisions

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ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS, INC. Before Newman, Lourie, and Stoll - Summary: Termination decision made by the Board in part based on the time-bar was “intimately related” to the institution...more

Jones Day

RPI: Not Quite a Jurisdictional Requirement

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Recently, the Patent Trial and Appeals Board (PTAB) declined to terminate an inter partes review (IPR) proceeding despite the Petitioner’s alleged failure to identify all the real parties-in-interest (RPIs)....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018...

Facebook filed an inter partes review (IPR) petition against claims 1–8 of Uniloc 2017 LLC’s patent on Voice over Internet Protocol. Meanwhile, an IPR proceeding was already pending on claims 1–6 and 8 of the same patent,...more

Jones Day

Fintiv Revisited—District Court Transfer Results in Institution Reversal

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In November 2020, Google LLC filed two petitions requesting an inter partes review of the claims of Ikorongo Technology LLC (“Ikorongo”) owned U.S. Patent No. 8,874,554 (“the ’554 patent”)....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Jones Day

PTAB Denies Patent Owner’s Last-Minute Discovery Request

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In Unified Patents, LLC f/k/a Unified Patents Inc. v. Electronics and Telecommunications Research Institute (IPR2021-00827), the PTAB denied a patent owner’s request to file a motion for additional discovery into any real...more

Troutman Pepper

Drilling Down: Real Parties in Interest and Time Bars - Patents: Post-Grant Podcast

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Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for the third installment of their podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper...more

Knobbe Martens

Does the Successor-in-Interest’s Shoe Fit?

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MOJAVE DESERT HOLDINGS, LLC v. CROCS, INC. Before Newman, Dyk, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: Parties challenging patents in inter partes reexamination can assign their rights...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Uniloc v. Facebook: Federal Circuit Rules Against a Finding of Estoppel in Joinder

Earlier this month, in the precedential decision Uniloc 2017 LLC v. Facebook Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) upheld the Patent Trial and Appeal Board (“the Board”) on the issue of estoppel (or...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - February 2021

[co-author: Kathleen Wills] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all...more

Knobbe Martens

If You Buy the Whole Company, You Can Fight Its Legal Battles

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MOJAVE DESERT HOLDINGS, LLC v. CROCS, INC. Before Newman, Dyk, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: The purchaser or assignee of all assets and interests of the requester of inter...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Acoustic Technology, Inc. v. Itron Networked...

Acoustic sued Itron for infringement of its patent, and the two parties settled, with Itron taking a license to the patent. Acoustic later sued Silver Spring for infringement. Silver Spring petitioned for inter partes review...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Introduction

Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to largely continue its operations....more

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