July 20, 2015

Last week we outlined our suggestions as to what an IPR petitioner should assert in an IPR action to avoid triggering the “could have raised” estoppel in a later filed district court action. But what if the party involved in the later filed district court proceeding was not the petitioner in the IPR proceeding? Can unraised IPR grounds be later asserted by a different party in the court proceeding if the IPR petitioner failed to raise them?

A final written decision by the PTAB estops not only the petitioner, but also any “real party-in-interest or privy of the petitioner,” from asserting in district court litigation that “the claim is invalid on any ground that the petitioner raised or reasonably could have raised” during the IPR proceeding. 35 U.S.C. § 315(e)(2). However, which parties may constitute a “real party-in-interest or privy of the petitioner” is not very clear. The America Invents Act (AIA) does not specifically define a “real party-in-interest” and “whether a party who is not a named participant in a given proceeding nonetheless constitutes a ‘real party-in-interest’ or ‘privy’ to that proceeding is a highly fact-dependent question” which will be handled by the Board on a case-by-case basis (link). As stated by Chief Judge James Donald Smith of the PTAB, “courts and commentators agree that there is no ‘bright-line test’ for determining the necessary quantity or degree of participation to qualify as a ‘real party-in-interest’ or ‘privy’…”

Two recent decisions of the PTAB addressed whether a non-party to an IPR should be considered a real party-in-interest. For additional information and analysis, please click here.