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PTAB Tracker

April 20, 2021

Adello Biologics, LLC v. Amgen, Inc., Case PGR2019-00001, Paper 11

Summary

Petitioners filed a Motion to Amend Mandatory Notices to add a party to the proceeding as a real party-in-interest (“RPI”). The PTAB granted Petitioners’ request. Although the PTAB agreed with the Respondent that it is important for the petition to identify all RPIs, the PTAB emphasized that if a petition fails to do so, “the Director can, and does, allow the petitioner to add a real party in interest.” Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018). Notably, the PTAB rejected Respondent’s argument that “because Petitioners did not identify all RPIs, they are “indisputably time-barred from bringing a PGR””, stating that “neither the statute nor the rule governing RPI disclosures is designed to award a patent owner such a windfall.”

Pertinent Facts

  • The party sought to be added (“New Party”) to the proceeding is a wholly owned subsidiary of a named party in interest (the conflict check of the PTAB applies to the New Party)
  • Petitioners attempted to add the RPI before institution (protects Patent Owner from successive petitions by related parties—i.e., “the second bite at the apple”)
  • Although Petitioners were aware of the New Party, the PTAB accepted their express representation that there was no intentional concealment or bad faith in the accidental omission of the New Party
  • Petitioners were represented by different counsel at the PTAB and the District Court, and previously voluntarily added another party as a party-in-interest (these facts suggest that the omission may have been human error)

Takeaways

  1. By designating this opinion as precedential, the PTAB has made clear that real parties-in- interest (RPIs) can be added to Mandatory Notices without altering the petition filing date.
  2. Petitioner must show that Patent Owner is not unduly prejudiced by the amendment of the Mandatory Notices.
  3. The PTAB is reluctant to alter a petition’s filing date based on the inadvertent omission of a RPI in the Mandatory Notices, particularly if it would result in a time bar to file the petition under 321(c).

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