A few weeks back I pointed out that the Patent Trial & Appeal Board (PTAB) had changed its position on whether or not a new RPI designation requires a resetting of the petition filing date. It has now made that determination precedential, along with two other decisions on the topic.
First, in Adello Biologics LLC v. Amgen Inc., Case PGR2019-00001 (PTAB Feb. 14, 2019) (Paper 11) the Board granted Petitioners' Motion to Update its Mandatory Notices before the institution of trial and denied Patent Owner's request for permission to file a Motion for Discovery of facts surrounding a real party-in-interest (RPI) issue. The Board determined that Petitioners' update to the Mandatory Notices was permissible under 35 U.S.C. § 322(a)(2) without assigning a new filing date to the Petition because Petitioners did not act in bad faith or engage in gamesmanship in omitting the RPI from the Mandatory Notices in the Petition and Petitioners' delay did not result in any undue prejudice to Patent Owner.
In the case I previously discussed, Proppant Express Investments, LLC v. Oren Technologies, LLC, Case IPR2017-01917 (PTAB Feb. 13, 2019) (Paper 86) the Board denied Patent Owner's Motion to Terminate. The Board determined that the Petition was not time-barred under 35 U.S.C. § 315(b) in view of the Federal Circuit's guidance in Applications in Internet Time (AIT) because the RPI that Petitioner added in an update to its mandatory notices would not have been time-barred if named at the time the Petition originally was filed. The Board further determined that the addition was permissible without assigning a new filing date to the Petition. This order also sets forth a number of factors that the Board previously has considered when allowing a new RPI to be named without assigning a new filing date to a petition, including: (1) avoiding 315(b) bar or estoppel rules; (2) prejudice to patent owner as a result of the delay; (3) bad faith; and (4) gamesmanship.
Finally, in Ventex Co., Ltd. v. Columbia Sportswear North America, Inc., Case IPR2017-00651 (PTAB Jan. 24, 2019) (Paper 152), in a redacted Order dismissing the petition, the Board vacated the Decision instituting inter partes review, and terminated the proceeding. The Board determined that the Petition was time-barred under 35 U.S.C. § 315(b) in view of the Federal Circuit's guidance in AIT because Petitioner failed to name an RPI and privy that would have been time-barred if named at the time the Petition originally was filed.
While these decisions will halt panel dependency on the issue, I don't see how the Board can decide that statutory requirements can somehow be excused as a matter of discretion. This issue will reach the Federal Circuit in due course.
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