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TAKEAWAY: In USPTO post-grant proceedings, a petitioner may correct omission of a real party-in-interest while maintaining the original petition filing date, if the omission was not an attempt to circumvent the time-bar, did not prejudice the patentee, and did not involve bad faith or gamesmanship.

The Patent Trial and Appeal Board (PTAB) recently designated as precedential, three decisions addressing the rule that patent challengers must identify all interested parties in a post-grant proceeding. These decisions provide clarification to help petitioners avoid dismissal for failing to comply with the requirement.

In January 2019, the PTAB terminated an inter partes review (IPR) it had previously instituted for a Columbia Sportswear patent on fabric that reflects body heat, upon finding that the petitioner omitted an interested party. Ventex Co. Ltd. v. Columbia Sportswear North America Inc., case number IPR2017-00651. In particular, the PTAB found that petitioner Ventex Co. Ltd. had failed to name Seirus Innovative Accessories, which conducts business with Ventex. Seirus was sued by Columbia for infringement more than a year before Ventex filed its petition. The PTAB concluded that the business arrangement between Ventex and Seirus made it “abundantly clear that Seirus had considerable interest in Ventex’s pursuit of an invalidity determination” of Columbia’s patent. IPR2017-00651, paper 152 at 9. The PTAB ruled there was an “inextricable link” between the two companies, making Seirus an interested party. Id. at 14-15. Since Seirus had been sued more than a year before Ventex’s challenged the patent, the petition was time-barred under 35 U.S.C. § 315(b).

In the two other precedential opinions, the PTAB addressed the ability to cure an omission by amending a petition to add an interested party. In Proppant Express Investments LLC et al. v. Oren Technologies LLP (IPR2017-01917) and Adello Biologics LLC et al. v. Amgen Inc. et al. (PGR2019-00001), the PTAB allowed the respective petitioners to amend their petitions to add new interested parties. The PTAB listed several factors to consider when deciding whether a petitioner can amend the list of interested parties while maintaining the original filing date, including whether (1) petitioners were attempting to circumvent the time-bar, (2) the proposed amendment would prejudice the patentee, and (3) the proposed amendment involved bad faith or gamesmanship. See, e.g., PGR2019-00001, paper 11; IPR 2017-01917, paper 86. The PTAB found that neither petitioner’s omission was due to bad faith or gamesmanship, and that the respective omissions did not result in undue prejudice to the patent owners.

A list of all PTAB precedential and informative decisions may be found here.