By Carl Kukkonen

In Unified Patents, LLC f/k/a Unified Patents Inc. v. Electronics and Telecommunications Research Institute (IPR2021-00827), the PTAB denied a patent owner’s request to file a motion for additional discovery into any real parties-in-interest. Here, the Patent Owner requested a telephone conference with regard to seeking discovery on the issue of real parties-in-interest. With regard to timing, the Patent Owner’s preliminary response, in which the Patent Owner would (and did) make the assertion that Petitioner failed to identify all real parties-in-interest, was due the following day. The Board said that there “could have been no reasonable expectation that a telephone conference call would be arranged, a motion for additional discovery be authorized and filed, an opposition to the motion be filed, a reply to the opposition be filed, and a decision be made on that motion all within a single business day, much less obtaining the information requested and making use of that information within the same business day.”

The Board in denying the motion referenced SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, (PTAB Oct. 6, 2020) (precedential), “where there is no time bar or estoppel implication with respect to the allegedly unnamed entity, it best serves the interest of cost and efficiency not to engage in a lengthy exercise to determine whether the alleged entity should have been named as a real party-in-interest. We have that circumstance here. It is not necessary to make that determination, at least prior to a decision on whether to institute inter partes review. At this time it is not necessary for Patent Owner to obtain the information it seeks.” See our previous post regarding this decision.

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An acknowledged leader in the profession, Carl Kukkonen has nearly 20 years of experience in strategic intellectual property counseling. He advises clients on patent infringement and validity, preparation and prosecution of patent applications, and brand protection matters.