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  • PTAB Denies Institution Of Supplier’s IPR Petition Under 35 U.S.C. § 315(b)

    On May 9, 2024, the USPTO’s Patent Trial and Appeal Board (“PTAB”) denied the Petition for inter partes review of Luminex International Co., Ltd (“Luminex”), under 35 U.S.C. § 315(b), finding that Luminex filed the Petition more than one year after the date on which a real party in interest was served with a complaint alleging infringement of the challenged patent. Luminex Int’l Co., Ltd. v. Signify Holdings B.V., IPR2024-00101, Paper 10 (PTAB May 9, 2024).

    Categories : IPRsReal Party In Interest
  • PTAB Finds Unified Patents’ Members Are Real Parties In Interest, But USPTO Director Says Determination Was Unnecessary And Vacates

    The PTAB recently released public versions of earlier decisions about the implications of Unified Patents’ business model and when the PTAB should decide disputes about identification of real parties in interest (“RPIs”).  On March 8, 2023, the PTAB issued a determination that Unified Patents should have identified its members Apple and Samsung as RPIs in its IPR challenge of MemoryWeb’s patent, which had been asserted against those members.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 56 (P.T.A.B. Mar. 8 2023).  On May 16, 2023, USPTO Director Vidal granted director review of the decision and vacated the RPI determination, finding it had been unnecessary to resolve the proceeding.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 (P.T.A.B. May 22, 2023).
    Categories : IPRsPTABReal Party In Interest
  • Federal Circuit Affirms PTAB’s Obviousness Decision And Finds Challenge To “Real Party In Interest” Requirement Non-Appealable

    On May 19, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the obviousness decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), and finding non-appealable the PTAB’s decision to institute inter partes review (IPR) notwithstanding a challenge that Petitioner-Appellee failed to identify “all real parties in interest.”  ESIP Series 2, LLC v. Puzhen Life USA, LLC, __ F.3d __ (Fed. Cir. May 19, 2020).  The CAFC found that substantial evidence supported the PTAB’s finding that a skilled artisan would have been motivated to combine the teachings of each prior art reference to arrive at the claimed invention, and that Patent Owner-Appellant’s challenge to the PTAB’s “real parties in interest” determination was not appealable.