Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 90 PTCJ 3504, 10/16/2015.
Copyright 姝2015 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com
PATENTS
The author discusses PTAB rulings on privity and real party-in-interest with advice for
both petitioners and patent owners.
Identification of Cases in Comments to Proposed Rule Change Is Consistent With
Prior Guidance in PTAB Practice Guide
BYDAVID L. CAVANAUGH
Privity and real party-in-interest (RPI) issues have
become important, sometimes case determinative,
for petitioners filing post-grant challenges such as
inter partes reviews and covered business method re-
views. The U.S. Patent and Trademark Office issued the
Patent Trial and Appeal Board Practice Guide which ad-
dressed the PTO’s determination of privity and RPI.
1
Based on feedback that the Office received during lis-
tening tours in 2014, the PTO published on Aug. 20,
2015, Proposed Amendments to the Rules of Practice
for Trials before the Patent Trial and Appeal Board.
2
While several comments from the public suggested
modifications in the practice of evaluating the RPI and
privity determination, the Office declined to change the
rules on that point. Instead, the Office referred to the
Practice Guide and provided a list of cases which it de-
scribed as providing helpful guidance.
3
This paper addresses RPI and privity as described by
the Practice Guide and the cases identified in the Pro-
posed Rules and Comments about the issue to provide
a useful summary of the current status of how the PTAB
has reviewed RPI and privity issues. A review of the
cases identified by the Office reveals certain factors
which appear important, even central, to the PTAB de-
cisions identified by the Office. Also, the decisions iden-
tify some other facts and factors that practitioners
should consider when evaluating RPI and privity.
1
Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
48759 (Aug. 14, 2012).
2
Proposed Amendments to the Rules of Practice Before the
Patent Trial and Appeal Board, 80 Fed. Reg. 50,720 (Aug. 20,
2015).
3
See Id. at 50729-50730. The cases identified are: Askelad-
den LLC v. Sean I. McGhie and Brian Buchheit, IPR2015-
00122, slip op. at 3–16 (P.T.A.B. Mar. 6, 2015) (Paper 30);
Zerto, Inc. v. EMC Corp., IPR2014-01254, slip op. at 6–15
(P.T.A.B. Mar. 3, 2015) (Paper 35); Aruze Gaming Macau, Ltd.
v. MGT Gaming, Inc., IPR2014-01288, slip op. at 6–20 (P.T.A.B.
Feb. 20, 2015); Unified Patents, Inc. v. Dragon Intellectual
Prop., LLC, IPR2014-01252, slip op. at 8–13 (P.T.A.B. Feb. 12,
2015) (Paper 37); GEA Process Eng’g, Inc. v. Steuben Foods,
Inc., IPR2014-00041, slip op. at 3–26 (P.T.A.B. Dec. 23, 2014)
(Paper 140); Samsung Elecs. Co. v. Black Hills Media, LLC,
IPR2014-00737, slip op. at 3–4 (P.T.A.B. Nov. 4, 2014) (Paper
7); First Data Corp. v. Cardsoft LLC, IPR2014-00715 (P.T.A.B.
Oct. 17, 2014); RPX Corp. v. VirnetX Inc., IPR2014-00171, slip
op. at 6–10 (P.T.A.B. July 14, 2014) (Paper 49); Alcon Re-
search, Ltd. v. Dr. Joseph Neev, IPR2014-00217, slip op. at 6–7
(P.T.A.B. May 9, 2014) (Paper 21) and Zoll Lifecor Corp. v.
Philips Elecs. N. Am. Corp., IPR2013-00606, slip op. at 3–12
(P.T.A.B. Mar. 20, 2014) (Paper 13).
David Cavanaugh is a partner in Wilmer-
Hale’s Washington, D.C., office and is Chair of
WilmerHale’s Post Grant Proceedings group.
He has broad legal experience in industry and
private practice and provides clients with
strategic, business-focused counseling in the
procurement, management and exploitation of
their intellectual property.
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