One of the reform measures under The America Invents Act of 2011 is the implementation of time restrictions on filing an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB). IPRs were instituted in September, 2012 as a counterpart to post-grant reviews to challenge the legitimacy of patent claims once they have been granted by the United States Patent and Trademark Office (USPTO). The purpose of filing an IPR is to try to avoid duplicate proceedings regarding the same matter. IPRs have become increasingly widespread since they can be used to challenge any patent issued on, before or after September 16, 2012.

The relevant provision under 35 U.S.C. Section 315(b) states that a "petitioner, real party-in interest, or privy of the petitioner" is precluded from filing a petition for an IPR more than one year after initially being presented with an infringement complaint regarding the patent at issue. As such, if the petitioner or party in interest is served with a patent infringement lawsuit, the one-year clock for an IPR challenge is triggered. The statute of limitations is designed to increase efficiency and reduce litigation costs by preventing parallel USPTO administrative hearings and district court actions. Moreover, requiring parties to undertake IPR proceedings at the outset of litigation would encourage resolution of patent validity at the preliminary stages of the dispute.

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Congresswoman Tulsi Gabbard (Rep. of Hawaii, 2nd District)

The definition of who is a "real party in interest" for purposes of the one year time limitation is not conclusively stated in the statute. The PTAB and USPTO have clarified that identifying a real party in interest is "a highly fact dependent question." Furthermore, no "bright-line test" exists for designating a party in interest as it pertains to the question of whether a party who is not a named party in a given proceeding nevertheless is regarded a real party in interest in that proceeding. The USPTO clarified that a real party in interest may be either the petitioner and/or the party who encouraged or sought the filing of the petition.

The PTAB has developed several pertinent factors for guiding this analysis. Certain activities by a party, such as furnishing the petitioner with information concerning the patent, providing funds to the petitioner in relation to the IPR, or directing or controlling (or having the opportunity to control) the previous litigation, may each be sufficient to constitute a finding of a party in interest. The PTAB has suggested that it would evaluate the nature of the interaction between the parties, including whether there was an implied representation, financial management or sharing of counsel or expertise, rather than the manner in which the parties publicly portray their relationship. Specific associations that are often prominent in patent infringement actions may be highly susceptible to this characterization including the parent-subsidiary and supplier-customer relationships.

Patent litigation can be a complex multi-step process. It is important to properly identify parties and defendants, and to do so in a timely manner, in order to fully preserve your rights and properly litigate your claim to its fullest extent. These fact-sensitive inquiries require the knowledge of a patent attorney with decades of experience in litigating patent infringement suits. My office can provide thorough and current legal advice tailored to your specific legal concerns to help you obtain a favorable monetary award. Contact me at (714) 342-7293 or visit my website listed below.