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PRECEDENTIAL: PTAB Clarifies Real Party in Interest Analysis

PRECEDENTIAL: PTAB Clarifies Real Party in Interest Analysis

by Carl Kukkonen | Nov 26, 2025 | PTAB News, PTAB Trial Basics, Real Party in Interest

By Carl Kukkonen and Matt Johnson – The Patent Trial and Appeal Board (PTAB) has designated as precedential a decision that squarely reaffirms the statutory requirement to identify all real parties in interest (RPI) in AIA petitions. By elevating Corning Optical...
Post-filing Activity May Create Privity Leading To Section 315(b) Dismissal

Post-filing Activity May Create Privity Leading To Section 315(b) Dismissal

by Matthew Johnson | Sep 16, 2025 | PTAB News, PTAB Trial Basics, Real Party in Interest, Trial Institution

By Sue Gerber and Matt Johnson – Under Section 315(b), an IPR may be dismissed as time barred “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is...
Federal Circuit: RPI Arguments Must First Be Raised at the PTAB

Federal Circuit: RPI Arguments Must First Be Raised at the PTAB

by Tom Ritchie | Jun 25, 2025 | Federal Circuit, PTAB News, Real Party in Interest

By Em Towers and Tom Ritchie – Apple Inc., et. al v. Gesture Technology Partners, LLC (March 4, 2025) (Moore (Chief Judge), Prost and Stoll) (on appeal from the Patent Trial and Appeal Board) [WAIVER; OBVIOUSNESS] The Federal Circuit affirmed the PTAB’s Final...
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...
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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.