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Institution Denied for Failure to Show Disclosure in Provisional Application

Institution Denied for Failure to Show Disclosure in Provisional Application

by David Maiorana | Sep 13, 2024 | Prior Art Issues, PTAB Trial Basics, Real Party in Interest, Trial Institution

By David Linden and Dave Maiorana – On December 1, 2023, Intelligent Wellhead Systems, Inc. (“Intelligent”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 11,401,779 (“the ’779 Patent”) (“IPR256”), assigned to Downing Wellhead Equipment, LLC...
District Court Awards Sanctions for False RPI Identification

District Court Awards Sanctions for False RPI Identification

by Matthew Johnson | Oct 27, 2023 | PTAB News, PTAB Trial Basics, Real Party in Interest

By Sue Gerber and Matt Johnson – The PTAB requires that all petitioners in IPR and PGR proceedings disclose the real party(ies)-in-interest.  While that might seem like a mere formality, a false disclosure can lead to very harsh consequences.  In a recent...
Customer/Manufacturer Relationship Insufficient To Bar

Customer/Manufacturer Relationship Insufficient To Bar

by Matthew Johnson | Aug 16, 2023 | PTAB News, Real Party in Interest, Time Limits

By Alexandra Boeriu,* Hannah Mehrle and Matt Johnson – Recently, the PTAB held that Samsung Electronics Co. Ltd. (“Petitioner”), met its burden in showing that a third party (the “Third Party”) was neither a real party-in-interest (“RPI”) nor in privity with...
Director Demonstrates Ability to Review Non-Dispositive PTAB Determinations

Director Demonstrates Ability to Review Non-Dispositive PTAB Determinations

by Josh Nightingale | Jul 28, 2023 | PTAB News, Real Party in Interest

By Ashvi Patel, Adam J. Cook,* and Josh Nightingale – On May 16, 2023, Director Katherine Vidal vacated a portion of a final written decision regarding real parties in interest (“RPIs”) in Unified Patents, LLC v. Memory Web, LLC, IPR2021-01413.  Director Vidal...
Director Review Orders Additional Discovery On Time Bar-RPI Issue

Director Review Orders Additional Discovery On Time Bar-RPI Issue

by Matthew Johnson | Mar 10, 2023 | Discovery, Real Party in Interest

By Jesse Wynn, Robert Breetz, Matt Johnson – In Samsung Electronics Co., Ltd. v. Netlist, Inc., the PTAB determined that a time-barred third party was not a real party in interest (“RPI”) and granted institution. IPR2022-00615, Paper 20 (Oct. 19, 2022) at 19...
PTAB Declines To Consider Substance Of RPI Complaint

PTAB Declines To Consider Substance Of RPI Complaint

by David Maiorana | Nov 16, 2022 | PTAB News, PTAB Trial Basics, Real Party in Interest, Uncategorized

By David Linden and Dave Maiorana – On May 27, 2022, Unified Patents, LLC (“Unified”) filed a Petition requesting inter partes review (“IPR”) of claims 1-3 and 5-25 of U.S. Patent No. 7,321,777 (“the ’777 Patent”), assigned to Speir Technologies Ltd. (“Speir”). ...
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    The opinions expressed are those of the authors and do not necessarily reflect the views of Jones Day or its clients. The posts and information provided are for general information purposes and are not intended to be and should not be taken as legal advice.