United States: Failure To Launch: Not Identifying The Proper Parties Can Prematurely End An Video Game IPR Challenge

Most video game patents that are asserted in litigation are also challenged at the PTAB through IPR or PGR petitions. Patent Owners looking for new ways attack such challenges have turned to the failure to disclose real-parties-in-interest ("RPI"). Under 35 U.S.C. § 312(a)(2), "[a] petition . . . may be considered only if . . . the petition identifies all real parties in interest[.]" Additionally, under 35 U.S.C. § 315(b), "[a]n inter partes review may not be instituted 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 served with a complaint alleging infringement of the patent." These requirements can pose unique questions for video game companies based on their relationships and business process.

For example, in World v. Bungie, the patent owner argued that petitioner Bungie failed to disclose Activision as an RPI, relying on a DevPub agreement between the two companies. The patent owner also argued that, pursuant to 35 U.S.C. § 315(b), the one year time bar had lapsed for filing an IPR petition because Activision had been served over a year before Bungie filed its petition. In the underlying litigation, the game Destiny had been accused of infringement, and a DevPub agreement contemplated financial support from Activision to Bungie for Destiny products, as well as legal review rights. Although the PTAB found that there was no failure to disclose a real-party-in-interest, the Federal Circuit reversed and remanded in September, requiring the PTAB to conduct a further analysis regarding the potential RPI issues. The Federal Circuit also noted that the burden to demonstrate that there was no RPI issue fell upon a Petitioner once a Patent Owner had raised a particular company that arguably should have been disclosed.

The Federal Circuit also just decided that it would not review PTAB decisions denying institution based upon a failure to disclose real parties in interest. ARRIS Int'l. PLC v. Chanbond, LLC, (Fed. Cir. Dec. 27, 2018). Given the frequent overlap in studios and companies involved in developing particular games, the RPI issue requires careful attention from gaming companies.

Key Takeaways:

• Carefully investigate what products are accused in a case.
• Determine whether DevPub or other agreements show intertwining relationships between companies.
• Analyze RPI issues to avoid termination of an otherwise quality PTAB challenge.
• Watch for time bar deadlines to avoid RPI disputes.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.