Under 35 U.S.C. § 311(b), “[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” In Intri–Plex Technologies, Inc. and Mmi Holdings, Ltd., v. Saint–Gobain Performance Plastics Rencol Limited, IPR2014–00309 (Paper 83), the Board denied Saint-Gobain’s challenge to the use of Applicant’s Admitted Prior Art under Section 311(b) even though the admission was not necessarily a patent or printed publication under the express definition of the statute.
In its Inter Partes Review Final Written Decision, the Patent Trial and Appeals Board (PTAB) found that Petitioner had shown by a preponderance of the evidence that method claims 16 and 17 of U.S. Patent No. 5,544,417 (the ’417 Patent) are unpatentable, while finding that Petitioner had not proved by a preponderance of the evidence that apparatus claims 7 and 10 which are similar to the method claims 16 and 17 of the ’417 Patent are unpatentable. Positec USA, Inc. and RW Direct, Inc. v. Black & Decker Inc., (IPR2013-00502, Paper No. 35, January 29, 2015).
The PTAB recently denied institution of inter partes review of two related petitions – Galderma S.A. v. Allergan Industrie, IPR 2014-01422 (“the 422 IPR”) and Galderma S.A. v. Allergan Industrie, IPR 2014-01417 (“the 417 IPR”), citing a failure to identify all the real parties-in-interest, as required by 35 U.S.C. § 312. Correctly identifying real parties-in-interest is a highly fact dependent inquiry that lacks any brightline rules. The PTAB’s decisions denying institution of the 417 and 422 IPRs provide insight into when a unnamed party has sufficient control to be considered a real party-in-interest and demonstrate the potentially severe consequences of failing to identify such parties in a petition. In view of this decision, Petitioners should consider being overly inclusive in listing real parties-in-interest.