PTAB Rejects Argument of Alleged Master Plan to Circumvent IPR Time Bar

October 23, 2023

Reading Time : 2 min

The Patent Trial and Appeal Board rejected a patent owner’s argument that the Board should exercise its discretion to deny a petitioner’s inter partes review (IPR) petition because Petitioner failed to name a time-barred real party-in-interest (RPI). The PTAB concluded that the evidence of record—including overlapping but minimal legal representation, different accused products and no proof of a preexisting relationship between parties—supported the conclusion that Petitioner had met its burden of identifying all RPIs.

In an IPR over a patent related to managing digital files across networks, Patent Owner argued that Petitioner failed to identify a time-barred party as an RPI, and that as such, the petition should be denied. According to Patent Owner, Petitioner and the alleged RPI shared litigation counsel, pursued a single and unified invalidity defense strategy, were parties to a joint defense agreement and submitted identical invalidity contentions. Patent Owner alleged that Petitioner and the alleged RPI entered a back-room, off-the-books deal to circumvent the IPR statutory time bar and estoppel provisions. Petitioner responded, submitting a declaration from counsel explaining that her limited involvement in the parallel litigation was to argue a Section 101 motion to dismiss, something she had extensive experience doing in that jurisdiction. She also addressed the joint defense agreement and emphasized that neither she nor anyone from her firm advised the alleged RPI in its invalidity contentions—nor did Petitioner receive any input or collaboration from the alleged RPI in preparing the IPRs. The PTAB found no evidence of any back-room, off-the-books deal. Instead, the PTAB recognized that sharing trial counsel in district court by a non-party to an IPR is common and by itself is insufficient to make the non-party an RPI, particularly where the representation was narrow and the accused products in the litigations were different, which was the case here.

The PTAB then rejected Patent Owner’s characterization of the case law as requiring only an analysis of whether the alleged RPI would benefit from having claims canceled or invalidated. The PTAB emphasized that the case law requires more than that, including making a determination as to whether the non-party had a preexisting, established relationship with the petitioner. In those cases, among other things, the parties communicated about the litigation and patents, the petitioners’ business model was to file patent challenges on behalf of other entities and the RPI made a significant payment to the petitioner shortly before the petition was filed. None of these elements were present here and there was no support for a finding that the petition and alleged RPI had an established relationship. Accordingly, the PTAB denied Patent Owner’s request to dismiss the petition because of a failure to name an RPI. Finally, the PTAB rejected Patent Owner’s undeveloped, passing argument that the alleged RPI was a privy of Petitioner.

Practice Tip: A petitioner responding to allegations that they did not disclose an RPI in a PTAB proceeding should emphasize lack of cooperation with an alleged RPI and provide evidentiary support, including in the form of declaration testimony. Conversely, a patent owner challenging an omission of an alleged RPI should focus on showing, for example, a preexisting, established relationship as well as collaboration between the petitioner and the omitted party.

Box Inc. v. Topia Tech. Inc., No. 2023-00427, Paper 17 (P.T.A.B. Aug. 4, 2023).

Share This Insight

Previous Entries

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

IP Newsflash

August 11, 2025

In considering a motion to dismiss infringement claims for two related patents, the District of Massachusetts recently held that pre-suit knowledge of a “parent” patent, without more, is insufficient to establish pre-suit knowledge of the “child” patent for purposes of indirect and willful infringement.

...

Read More

IP Newsflash

August 8, 2025

Following a jury verdict finding trade secret misappropriation, the District Court for the District of Massachusetts granted-in-part a plaintiff’s motion for a permanent injunction to prohibit defendants from using plaintiff’s trade secrets. The district court further required defendants to reassign to plaintiff patents and patent applications that disclosed or were derived from plaintiff’s trade secrets as part of its equitable relief.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.