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

July 1, 2025

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry applied when evaluating the claims of a patent.

...

Read More

IP Newsflash

June 26, 2025

The Northern District of Ohio denied a motion to compel the plaintiff to produce test results referenced in its initial disclosures and complaint. The court found that because the “test results are not facts but rather are opinions,” the information was protected as work product. Furthermore, because that testing would not be used as evidence in the litigation, the defendant was not prejudiced.

...

Read More

IP Newsflash

June 6, 2025

In a precedential opinion, the Federal Circuit definitively held that the Patent Trial and Appeal Board has jurisdiction over IPRs that concern expired patents.

...

Read More

IP Newsflash

June 6, 2025

In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was uncertain that all defendants would be bound by the statutory estoppel provision of 35 U.S.C. § 315(e).

...

Read More

IP Newsflash

May 30, 2025

A district court recently dismissed a patent infringement complaint for improper venue under 28 U.S.C. § 1400(b), finding that the storage and distribution of products from an Amazon warehouse was not sufficient to establish that warehouse as a regular and established place of business in the district.

...

Read More

IP Newsflash

May 27, 2025

The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that statements made during prosecution of a parent application before the asserted claims were allowed amounted to a prosecution disclaimer that extended to subsequent patents in the family. In reaching this conclusion, the court rejected an attempt by the patentee to resurrect the claim scope through a unilateral, self-serving statement made in later applications in the family.

...

Read More

IP Newsflash

May 13, 2025

The Federal Circuit recently affirmed a district court’s holding that patent term extension (PTE) for a reissued patent was properly based on the issue date of the original patent and not that of the reissued patent. The Federal Circuit concluded that, where both the original and reissued patents claimed a drug product under regulatory review, using the issue date of the original patent to calculate PTE comports with both the purpose of the Hatch-Waxman Act and the related statutory context.

...

Read More

IP Newsflash

May 12, 2025

The Patent Trial and Appeal Board recently declined to institute a petition for IPR that was filed on the same day that the petitioner filed another petition challenging the same claims of the same patent. The board was not persuaded by petitioner’s arguments that a second petition was needed due to alleged claim construction issues or the number, length or scope differences of the challenged claims.

...

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.