BRI, after Cuozzo, and RPI Factors in Post-Grant Proceedings

March 11, 2015

This webinar takes a look at two topics. First, continuing from last month’s webinar, this webinar details situations in which the broadest reasonable interpretation does not apply during a post-grant proceeding and considers whether that does or should have an impact on strategies for the Petitioner or Patent Owner. Second, this webinar looks at the potential repercussions of failing to name all of the real parties-in-interest on a petition, review various circumstances that raise the issue, and considers how to potentially handle situations in which it is unclear whether a non-party is a real party-in-interest.

Karl Renner, Principal and Post-Grant Practice Co-Chair
Kevin Greene, Principal
Ron Vogel, Associate
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Webinar Summary

  • Broadest Reasonable Interest (BRI) after Cuozzo
    • Applied in post grant proceedings for unexpired patents
      • Rationale = claim amendment remains available
    • What happens when patent expires during post grant proceeding (i.e., no amendment available)?
      • 3 Scenarios
        • Patent expires prior to institution decision (ID)
          • Board has applied narrower Phillips construction throughout proceeding
        • Patent expires after institution but prior to Final Written Decision (FWD)
          • Board has applied BRI at ID but Phillips at FWD
        • Patent expires after FWD but before appeal
          • In inter partes reexam context, Board applied BRI but Fed Cir applied narrower Phillips standard
  • Real-Party-in-Interest (RPI) Factors
    • By statute, Petition must list all RPIs – important to get it correct
      • 3 Rationale
        • Be able to determine 1 year bar in IPRs (no bar in CBMs)
        • Identify parties to whom estoppel applies
        • Assist Board in identifying potential conflicts (i.e., judge may need to recuse if conflict of interest with one of the parties
    • Risks of Petitioner being under-inclusive or over-inclusive in Petition
      • Under-inclusive
        • Making corrections changes filing date since such corrections are not typographical or clerical corrections under the rules
        • Thus, cannot cure omission of RPI if, once corrected, the filing date falls outside the 1 year period
      • Over-inclusive
        • Unnecessarily exposes those parties to estoppel
        • Opens up petition to potentially unknown 1 year bars
        • May violate statute (i.e., “all RPIs” may mean “all RPIs and no one else”)
    • Board will consider RPI issues at any time during proceeding
      • For example, Board vacated ID and terminated IPR where Patent Owner established that correct RPI designation would cause 1 year bar to have lapsed
      • RPI Analysis – highly fact dependent
        • Board uses Taylor Factors (from Supreme Court decision)
        • Analysis focuses on control and payment
        • Common Issues considered in RPI Analysis
          • Corporate ownership and structure- But even 100% ownership may not be enough without other factors
          • Common counsel
          • Payment for IPR
          • Preparing the petition
          • Related District Court Proceedings

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