In Application in Internet Time v. RPX, the Federal Circuit vacated inter partes review (IPR) decisions invalidating two US patents because the Patent Trial and Appeal Board (PTAB) applied an unduly restrictive test for determining whether an entity (i.e., a RPX member) is a real party in interest within the meaning of 35 U.S.C. § 315(b) and failed to consider the entire evidence in assessing whether § 315(b) barred institution of the IPRs filed by RPX.
The Federal Circuit stated the PTAB erred in not further investigating whether the RPX member was the real party in interest even though RPX had communications back and forth with the RPX member and received a large payment from the RPX member just before the IPR petitions were filed.
In short, a defendant in a patent infringement suit that waits more than one year after being served is time barred from filing an IPR. 35 U.S.C. § 315(b). Thus, a defendant that is a member of an organization that files IPR to avoid the one year time bar might expect that PTAB will permit discovery on the relationship between the organization and the defendant to see if the defendant is a real party in interest and the organization is its proxy. The discovery may encompass the communications and the funding of the organization. Once the facts are ascertained it may affect the final IPR decision. Thus, a defendant should expect that it needs to file an IPR petition within one year of being sued rather than rely on a third party organization which may be held to be its proxy.
Copyright © 2018 Robert Moll. All rights reserved.
Showing posts with label real party in interest. Show all posts
Showing posts with label real party in interest. Show all posts
Sunday, December 30, 2018
Saturday, June 7, 2014
Patent troll on the verge of winning 1 percent of iPhone revenue
In Patent troll on the verge of winning 1 percent of iPhone revenue, Joe Mullin reports Apple is still unsuccessfully fighting an 0.98% royalty rate to be paid to VirnetX for patent infringement by FaceTime and VPN On Demand.
In 2012, Apple lost and was ordered to pay $368 million (which Mullin says could be an annual cost) and lost its inter partes review case on June 5, 2014, because the judges held that RPX which engaged a law firm to file the petition was determined to be a proxy for Apple which was barred from filing the IPR petition more than one year after the infringement complaint. See PTAB decision.
The PTAB determined Apple was the real-party-in interest behind the RPX petitions and denied them as time-barred. Contrary to the requirements of 35 USC 315(b), the RPX petitions were filed more than 1 year after the date on which the real party in interest Apple was served with a complaint alleging patent infringement. Thus, the IPRs could not be instituted.
This article is worth reading for those considering using a third party as a proxy and highlights the risk of not filing an IPR petition timely after being sued.
Copyright © 2014 Robert Moll. All rights reserved.
In 2012, Apple lost and was ordered to pay $368 million (which Mullin says could be an annual cost) and lost its inter partes review case on June 5, 2014, because the judges held that RPX which engaged a law firm to file the petition was determined to be a proxy for Apple which was barred from filing the IPR petition more than one year after the infringement complaint. See PTAB decision.
The PTAB determined Apple was the real-party-in interest behind the RPX petitions and denied them as time-barred. Contrary to the requirements of 35 USC 315(b), the RPX petitions were filed more than 1 year after the date on which the real party in interest Apple was served with a complaint alleging patent infringement. Thus, the IPRs could not be instituted.
This article is worth reading for those considering using a third party as a proxy and highlights the risk of not filing an IPR petition timely after being sued.
Copyright © 2014 Robert Moll. All rights reserved.
Monday, April 1, 2013
Microsoft Lists All Patents on the Web - The Knowledge Trap
On March 28, 2013, Brad Smith, Microsoft's GC and Executive VP, Legal and Corporate Affairs, mentioned in Enhancing Transparency: Putting Microsoft's Patents on the Web that Microsoft has published information (e.g., patent number, title, and country) regarding all Microsoft owned patents on the Web. The actual content of the patent will be available through the US patent databases (e.g., USPTO, Google Patent Search, and Free Patents Online).
From Mr. Smith's post: "Today, we launched a “Patent Tracker” tool that provides a list of all of the patents Microsoft owns. Through the Patent Tracker, users can obtain the list in two forms: (1) an online list that is searchable by patent number, patent title, country and whether the patent is held by Microsoft or a subsidiary, and (2) a CSV file containing the entire list that is downloadable and searchable in Microsoft Excel. We took this approach so that people can come to our site if they want to run a quick search, but can also download the information if they want to perform deeper analysis. Above is a video providing additional information about the need for transparency and how to use the Patent Tracker.
We take this step today because we believe that all stakeholders of the U.S. patent system – private companies, the U.S. Patent and Trademark Office, Congress and the courts – share responsibility for taking steps to improve its operation. Sensible improvements to the patent system, such as increasing transparency on patent ownership, will yield tangible outcomes that enhance American competitiveness, create jobs and foster growth in nearly every sector of the U.S. economy.
We urge other companies to join us in making available information about which patents they own. By doing so, they will help increase transparency, facilitate licensing, and help ensure that the patent system continues to fulfill its role in promoting and encouraging innovation."
Joff Wild of Intellectual Asset Management states Microsoft's aim to bring greater transparency to their holdings should be welcomed. And in my opinion, downloading a list with numbers, titles, and countries of 41,000 patents shouldn't translate into being imputed with knowledge of any given patent. However, what's logically next? If you review a relevant patent on the list as it may generate the need for a patent license or a opinion that the patent is not infringed or invalid. And if infringement is later found and the opinion is held incompetent, that knowledge increases the risk of willful infringement and increased damages. This is suggested since In re Seagate Technology held establishing willful infringement requires the patent owner show (1) the infringer acted despite an objectively high likelihood its action constituted infringement; and (2) the risk was known or so obvious it should have been known.
Copyright © 2013 Robert Moll. All rights reserved.
From Mr. Smith's post: "Today, we launched a “Patent Tracker” tool that provides a list of all of the patents Microsoft owns. Through the Patent Tracker, users can obtain the list in two forms: (1) an online list that is searchable by patent number, patent title, country and whether the patent is held by Microsoft or a subsidiary, and (2) a CSV file containing the entire list that is downloadable and searchable in Microsoft Excel. We took this approach so that people can come to our site if they want to run a quick search, but can also download the information if they want to perform deeper analysis. Above is a video providing additional information about the need for transparency and how to use the Patent Tracker.
We take this step today because we believe that all stakeholders of the U.S. patent system – private companies, the U.S. Patent and Trademark Office, Congress and the courts – share responsibility for taking steps to improve its operation. Sensible improvements to the patent system, such as increasing transparency on patent ownership, will yield tangible outcomes that enhance American competitiveness, create jobs and foster growth in nearly every sector of the U.S. economy.
We urge other companies to join us in making available information about which patents they own. By doing so, they will help increase transparency, facilitate licensing, and help ensure that the patent system continues to fulfill its role in promoting and encouraging innovation."
Joff Wild of Intellectual Asset Management states Microsoft's aim to bring greater transparency to their holdings should be welcomed. And in my opinion, downloading a list with numbers, titles, and countries of 41,000 patents shouldn't translate into being imputed with knowledge of any given patent. However, what's logically next? If you review a relevant patent on the list as it may generate the need for a patent license or a opinion that the patent is not infringed or invalid. And if infringement is later found and the opinion is held incompetent, that knowledge increases the risk of willful infringement and increased damages. This is suggested since In re Seagate Technology held establishing willful infringement requires the patent owner show (1) the infringer acted despite an objectively high likelihood its action constituted infringement; and (2) the risk was known or so obvious it should have been known.
Copyright © 2013 Robert Moll. All rights reserved.
Sunday, March 24, 2013
Written Comments on USPTO's Proposals for Recording Ownership During Application Pendency and Patent Term
The USPTO recently proposed to increase transparency regarding ownership of US patent applications and US patents. The drivers of the initiative (e.g., patent trolls use of shell corporations) seem unclear, but it does sound like a good idea-- after all we should be able to efficiently determine who owns a given application or a patent. However, the benefit of identifying "the real-party-in-interest" at all stages will cost something on every application filed as patent attorneys and staff charge to maintain ownership records from the filing date to the end of the patent term. "Dangnabbit, I thought you would do it for free!"
Hopefully, the USPTO will not implement rules to increase transparency until it addresses the costs and other problems raised in some of the written comments from AIPLA, IPO, DOJ, American Antitrust Institute, Article One Partners, Coalition for Patent Fairness, HP, Intellectual Ventures, and Novartis, plus individuals: Professor Colleen Chien, Professor Robin Feldman, Professor Arti Rai, and patent attorney Alan Minsk.
For details see the following written comments made in response to the Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2013 Robert Moll. All rights reserved.
Hopefully, the USPTO will not implement rules to increase transparency until it addresses the costs and other problems raised in some of the written comments from AIPLA, IPO, DOJ, American Antitrust Institute, Article One Partners, Coalition for Patent Fairness, HP, Intellectual Ventures, and Novartis, plus individuals: Professor Colleen Chien, Professor Robin Feldman, Professor Arti Rai, and patent attorney Alan Minsk.
For details see the following written comments made in response to the Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2013 Robert Moll. All rights reserved.
Friday, November 30, 2012
PTO Seeking Transparency in Patent Ownership Roundtable
The PTO is considering regulations to require greater transparency concerning ownership of patents and patent applications. I am interested to see patent aggregators or patent monetizers views on this topic.
For details see Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2012 Robert Moll. All rights reserved.
For details see Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2012 Robert Moll. All rights reserved.
Saturday, April 21, 2012
Public Comments on the USPTO's Proposed Rules to Implement the America Invents Act
The USPTO published 374 public comments on the proposed rules to implement the America Invents
Act (AIA):
The USPTO also published 24 comments in response to the PPAC hearings on the proposed patent fees.
- Inter Partes Review
- Post-Grant Review
- Transitional Program for Covered Business Method Patent Review
- Definition of Technological Invention
- Derivation Proceedings
- Umbrella Administrative Trial Rules and Practice Guide
- Genetic Diagnostic Testing
- Statute of Limitations Provisions for Office Disciplinary Proceedings
- Patent Public Advisory Committee Public Hearings on the Proposed Patent Fee Schedule
- Satellite Offices for the Nationwide Workforce
- Supplemental Examination and Revision of Reexamination Fees
- Inventor's Oath or Declaration
- Preissuance Submissions by Third Parties
- Post Patent Provisions
- Leahy-Smith America Invents Act Implementation
The USPTO also published 24 comments in response to the PPAC hearings on the proposed patent fees.
Saturday, April 14, 2012
Chief Judge Smith - Addressing Key Aspects of the America Invents Act
The Leahy-Smith America Invents Act Implementation web page contains news and information regarding the USPTO's implementation of the America Invents Act (AIA). As part of that effort, Chief Judge Smith of the Board of Patent Appeals and Interferences recently gave a message explaining the proposed rules for inter partes review (IPR), post grant review (PGR), covered business method review, and derivation under the AIA.
Chief Judge Smith says the public is regularly raising certain issues such as: (a) standards necessary to trigger inter partes (IPR) and post grant reviews (PGR), (b) the real party in interest requirement for an IPR/PGR petitioner, (c) timing for completion of a new trial, (d) the pro hac vice admission of non-registered practitioners, and (e) the definition of the term technological invention.
The following links give Chief Judge Smith's input on these key aspects of the AIA:
Chief Judge Smith says the public is regularly raising certain issues such as: (a) standards necessary to trigger inter partes (IPR) and post grant reviews (PGR), (b) the real party in interest requirement for an IPR/PGR petitioner, (c) timing for completion of a new trial, (d) the pro hac vice admission of non-registered practitioners, and (e) the definition of the term technological invention.
The following links give Chief Judge Smith's input on these key aspects of the AIA:
- Standards to Trigger an Inter Partes Review and Post Grant Review
- Real Party in Interest
- Timing to Complete an Inter Partes Review, Post Grant Review, and Covered Business Method Review
- Pro Hac Vice Admission to Practice before the Board for New Administrative Patent Trial
- Technological Invention Definition
Copyright © 2012 Robert Moll. All rights reserved.
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