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`SCRIPLQ
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`FEDERAL REGISTER
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`Vol. 77
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`No. 157
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`Tuesday,
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`August 14, 2012
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`Part V
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`Department of Commerce
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`Patent and Trademark Office
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`37 CFR Part 42
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`Office Patent Trial Practice Guide; Rule
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`TS1013
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`Federal Register/Vol. 77, No. 157/Tuesday, August 14, 2012/Rules and Regulations
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`DEPARTMENT OF COMMEFICE
`
`Patent and Trademark Ofiice
`
`37 CFFI Part 42
`
`[Docket No. PTo—P—2o11—un94]
`
`Office Patent Trial Practice Guide
`
`AGENCY: United States Patent and
`Trademark Office, Commerce.
`ACTION: Notice of practice guide.
`
`SUMMARY: The Leahy-Smith America
`invents Act (AIA) establishes several
`new trial proceedings to be conducted
`by the Patent Trial and Appeal Board
`(Board] including Inter partes review,
`post-grant review, the transitional
`program for covered business method
`patents, and derivation proceedings. In
`separate rulemaicings, the United States
`Patent and Trademark Office (Office or
`USPTO) is revising the rules of practice
`to implement these provisions of the
`ALA that provide for the trial
`proceedings before the Board. The
`Office publishes in this notice a practice
`guide for the trial final rules to advise
`the public on the general framework of
`the regulations, including the structure
`and times for taking action in each of
`the new proceedings.
`DATES: Effective Date: This practice
`guide applies to inter partes review,
`post-grant review, and covered business
`method patent review proceedings
`commencing on or after September 16,
`2012, as well as derivation proceedings
`commencing on or after March 16, 201 3.
`FOR FURTHER INFORMATION CONTACT:
`
`Michael Tierney, Lead Administrative
`Patent judge, Board of Patent Appeals
`and Interferences [will be renamed as
`Patent Trial and Appeal Board on
`September 16, 2012], by telephone at
`(571) 272-9797.
`SUFPLEMENTRHY INFORMATION!
`
`Executive Summary: The patent trial
`regulations lay out a framework for
`conducting the proceedings aimed at
`streamlining and converging the issues
`for decision. In doing so, the Office’s
`goal is to conduct proceedings in a
`timely, fair. and efficient manner.
`Further, the Office has designed the
`proceedings to allow each party to
`determine the preferred manner of
`putting forward its case, subject to the
`guidance of judges who determine the
`needs of a particular case through
`procedural and substantive rulings
`throughout the proceedings.
`Background: The Leahy—Smith
`America invents Act establishes several
`new trial proceedings to be conducted
`by the Board including: [1] Inter partes
`review [IPR]; [2] posbgrant review
`
`{PGR]; [3] a transitional program for
`covered business method patents
`(CHM); and [4] derivation proceedings.
`The AIA requires the Office to
`promulgate rules for the proceedings,
`with the PGR. IPR. and (IBM rules to be
`in effect one year after AIA enactment
`and the derivation rules to be in effect
`18 months after AIA enactment.
`Consistent with the statute, the Office
`published a number of notices of
`proposed rulemaking in February of
`2012, and requested written comments
`on the Office’s proposed
`implementation of the new trial
`proceedings ofthe AIA. The Office also
`hosted a series of public educational
`roadshows, across the country.
`regarding the pro osed rules.
`Additionally, t e Office published a
`practice guide based on the proposed
`trial rules in the Federal Register to
`provide the public an opportunity to
`comment. Practice Guide for Proposed
`Trial Rules, 77 FR sees (Feb. 9, 2012]
`(Request for Comments] (hereafter
`“Practice Guide for Proposed Trial
`Rules” or "Office Patent Trial Practice
`Guide"). This Office Patent Trial
`Practice Guide is intended to advise the
`public on the general framework of the
`rules, including the structure and times
`for taking action in each of the new
`proceedings.
`In response to the notices of proposed
`rulemaking and the Practice Guide
`notice. 1.he Office received 251
`submissions of written comments from
`intellectual property organizations,
`businesses, law firms. patent
`practitioners. and others. including a
`United States senator who was a
`principal author of section 13 of the
`AIA. The comments provided support
`for, opposition to, and diverse
`recommendations on the proposed
`rules. The Office appreciates the
`thoughtful comments. and has
`considered and analyzed the comments
`thoroughly. In light of the comments,
`the Office has made modifications to the
`proposed rules to provide clarity and to
`balance the interests of the public,
`patent owners, patent challengers, and
`other interested parties. in light of the
`statutory requirements and
`considerations, such as the effect ofthe
`regulations on the economy, the
`integrity of the patent system, the
`efficient administration ofthe Office,
`and the ability of the Office to complete
`the proceedings timely.
`For the imp ementation ofsections 3,
`6, 7. and 18 of the AIA that are related
`to administrative trials and judicial
`review of Board decisions, the Office is
`publishing the following final rules in
`separate notices in the Federal Register‘.
`{1} Rules ofPractice for Trials before the
`
`Potent Trial and Appeal Board and
`judicial Review o_fPatent Trial and
`Appeal Board Decisions [RIN 0651-
`ACIFEJ]: [2] Changes to Implement Inter
`Partes Review Proceedings, Post—Grant
`Review Proceedings. and Transitional
`Program for Covered Business Method
`Patents [RIN 0fi51~AC71); [3]
`Transitional Program for Covered
`Business Method Pats-nts—Definitions of
`Covered Business Method Patent and
`Technological invention [RIN 0651-
`AC75): and (4) Changes to Implement
`Derivation Proceedings [RIN 0551-
`AC74]. The Office also provides
`responses to the public written
`comments in these final rules in the
`Response to Comments sections of the
`notices.
`Further, the Office revised the Office
`Patent Trial Practice Guide based on the
`final rules. The Office has been working
`diligently to publish all of the final rules
`related to the new AIA trial proceedings
`and the Office Patent Trial Practice
`Guide in the Federal Register
`concurrently. Due to certain limitations.
`however, the Office Patent Trial Practice
`and the specific final rule for derivation
`proceedings will be published in the
`Federal Register after the other final
`rules. In particular, the specific rules for
`derivation, i.e., §§ 42.404 through
`42.412, will be published at a later date.
`Statutory Requirements: The AIA
`provides certain minimum requirements
`for each of the new proceedings.
`Provided below is a brief overview of
`these requirements.
`Proceedings begin with the filing of a
`petition to institute a trial. The petition
`must be filed with the Board consistent
`with any time period required by statute
`and be accompanied by the evidence the
`petitioner seeks to rely upon. See, eg,
`35 U.S.C. 135(a] and 31f[c), as
`amended, and § 42.3 (references to
`§ 42.): or § 1.): refer to title 37 ofthe
`Code of Federal Regulations]. For IPR,
`PGR, and CBM, the patent owner is
`afforded an opportunity to file a
`preliminary response. 35 U.S.C. 313, as
`amended, and 35 U.S.C. 323.
`The Board acting on behalf of the
`Director may institute a trial where the
`petitioner establishes that the standards
`for instituting the requested trial are met
`taking into account any preliminary
`response filed by the patent owner.
`Conversely. the Board may not
`authorize a trial where the information
`presented in the petition, taking into
`account any patent owner preliminary
`response. fails to meet the requisite
`standard for instituting the trial. See
`e.g., 35 U.S.C. 314, as amended. and 35
`U.S.C. 324. Where there are multiple
`matters in the Office involving the same
`patent, the Board may determine how
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`48757
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`the proceedings will proceed, including
`providing for a stay, transfer.
`consolidation. or termination of any
`such matter. See, e.g., 35 U.S.C. 315, as
`amended, and 35 U.S.C. 325.
`The AIA requires that the Board
`conduct AIA trials and that the Director
`prescribe regulations concerning the
`conduct ofthose trials. 35 U.S.C. 6. 135,
`and 316, as amended, and 35 U.S.C.
`325. For example, for IPR, PGR, and
`CBM, the AIA mandates the
`promulgation of rules including motions
`to seal, procedures for filing
`supplemental information, standards
`and procedures for discovery, sanctions
`for improper use of the proceeding.
`entry of protective orders, and oral
`hearings. See, e.g., 35 U.S.C. 316(a], as
`amended, and 35 U.S.C. 326.
`Additionally, the AIA mandates the
`promulgation of rules for IPR, PGR, and
`CBM concerning the submission of a
`patent owner response with supporting
`evidence and allowing the patent owner
`a motion to amend the patent. Id.
`A petitioner and a patent owner may
`terminate the proceeding with respect to
`the petitioner by filing a written
`agreement with the Board, uniess the
`Board has already decided the merits of
`the proceeding before the request for
`termination is filed. See, e.g., 35 U.S.C.
`317, as amended, and 35 U.S.C. 327. If
`no petitioner remains in the proceeding.
`the Board may terminate the review or
`proceed to a final written decision. For
`derivation proceedings, the parties may
`arbitrate issues in the proceeding, but
`nothing precludes the Office from
`determining the patentability of the
`claimed inventions involved in the
`
`proceeding. 35 U.S.C. 135, as amended.
`Wrhere a trial has been instituted and
`not dismissed. the Board will issue a
`final written decision with respect to
`the involved patent and/or applications.
`35 U.S.C. 135 and 35 U.S.C. 318, as
`amended, and 35 U.S.C. 328.
`For IPR, PGR. and CBM, the AIA
`requires that the Office consider the
`effect of the regulations on the economy,
`the integrity of the patent system, the
`efficient administration of the Office,
`and the ability of the Office to timely
`complete the proceedings. 35 U.S.C.
`316, as amended, and 35 U.S.C. 326. In
`developing the general trial rules. as
`well as the specific rules for the
`individual proceedings, the Office has
`taken these considerations into account.
`Further, the specific rules for the
`individual proceedings take into
`account the jurisdictional and timing
`requirements for the particular
`proceedings.
`General Overview of Proceedings:
`Generally, the proceedings begin with
`the filing of a petition that identifies all
`ofthe claims challenged and the
`grounds and supporting evidence on a
`claim—by-claim basis. Within three
`months of notification of a filing date,
`the patent owner in an IPR, PGR. or
`CBM proceeding may file a preliminary
`response to the petition, including a
`simple statement that the patent owner
`elects not to respond to the petition. The
`Board acting on behalf of the Director
`will determine whether to institute a
`trial within three months of the date the
`patent owner‘s preliminary response
`was due or was filed, whichever is first.
`In instituting a trial. the Board will
`narrow the issues for final decision by
`
`].
`
`authorizing the trial to proceed only on
`the challenged claims for which the
`threshold standards for the proceeding
`have been met. Further. the Board will
`identify, on a claim-by-claim basis, the
`grounds on which the trial will proceed.
`Any claim or issue not included in the
`authorization for review will not be part
`of the trial. A party dissatisfied with the
`Board's determination to institute a trial
`may request rehearing as to points
`believed to have been overlooked or
`misapprehended. See § 42.71(d) and [
`The Board will enter a Scheduling
`Order (Appendix A) concurrent with the
`decision to institute a trial. The
`Scheduling Order will set due dates for
`the trial taking into account the
`complexity of the proceeding but
`ensuring that the trial is completed
`within one year of institution.
`For example, a Scheduling Order for
`an IPR or PGR might. consistent with
`§§ 42.120 and 42.220, provide a three
`month deadline for patent owner
`discovery and for filing a patent owner
`response and motion to amend. Once
`the patent owner’s response and motion
`to amend have been filed. the
`Scheduling Order might provide the
`petitioner with three months for
`discovery and for filing a petitioner's
`reply to the response and the
`petitioner’s opposition to the
`amendment. The Scheduling Order
`might then provide the patent owner
`with one month for discovery and for
`filing a patent owner reply to
`petitioner‘s opposition to a patent
`owner amendment. A representative
`timeline is provided below:
`
`Petltlon
`Filed
`
`P0
`Preliminary
`Res ponso
`
`DeL}i'Sl0l‘I
`on
`Petition
`
`P0 Response
`3 Motion to
`Amend Claims
`
`Pelllnoner
`Reply to
`P0 Response
`8 O|)DGSILnon
`Io Amendment
`
`PO Reply
`lo Opposition
`to Amanurn ant
`
`Oval
`Hearing
`
`Flflal
`Wniien
`Decision
`
`C;*O,m,*O—tO—'O—'>C--*0->0
`3 months
`3 months
`I rnon'.PI
`Healing Set
`3 n1onE1s
`on Recuest
`Petmoner
`Po
`no
`Fenocl for
`Observations
`Discovery
`Discovery
`Discovery
`Peliod
`Period
`Period
`8 Motions to
`Exclude Evida nos
`
`
`
`Sequence of discovery. Once
`instituted, absent special circumstances,
`discovery will proceed in a sequenced
`fashion. For example, the patent owner
`
`may begin deposing the petitioner’s
`declarants once the proceeding is
`instituted. After the patent owner has
`filed a patent owner response and any
`
`motion to amend the claims, the
`petitioner may depose the patent
`owner's declarants. Similarly, after the
`petitioner has filed a reply to the patent
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`owner’s response and an opposition to
`an amendment, the patent owner may
`depose the petitioner’s declarauts and
`file a reply in support ofits claim
`amendments. Where the patent owner
`relies upon new declaration evidence in
`support of its amendments, the
`petitioner will be authorized to depose
`the declarants and submit observations
`on the deposition. Once the time for
`taking discovery in the trial has ended,
`the parties will be authorized to file
`motions to exclude evidence believed to
`be inadmissible. Admissibility of
`evidence is generally governed by the
`Federal Rules of Evidence.
`Sequence offiiing responses and
`motions. An initial conference call will
`be held about one month from the date
`of institution to discuss the motions that
`the parties intend to file and to
`determine if any adjustment needs to be
`made to the Scheduling Order. The
`patent owner may file a patent owner‘s
`response and} or a motion to amend the
`claims by the time set in the Scheduling
`Order. The petitioner will then file a
`reply to the patent owner's response and
`any opposition to the patent owner's
`amendment. Both parties will then be
`permitted an opportunity to file motions
`to exclude an opponent’s evidence
`believed to be inadmissible. After all
`motions have been filed, the parties will
`be afforded an opportunity to have an
`oral argument at the Board.
`Summary of the Rains: The following
`is a general summary of the rules for the
`proceedings.
`I. General Procedures
`The rules are to be construed so as to
`ensure the just, speedy, and inexpensive
`resolution of a proceeding and, where
`appropriate, the rules may be modified
`to accomplish these goals. §42.'1(b];
`§ 4.-2.5(a) and [b].
`
`A. Jurisdiction and Management of the
`Record
`
`1. Jurisdiction: 35 U.S.C. 6(b). as
`amended. provides that the Board is to
`conduct derivation proceedings, inter
`portes reviews, and post-grant reviews.
`The Board also conducts the transitional
`program for covered business method
`reviews, which are subject to Board
`review under 35 U.S.C. 6[b}, as
`amended, 35 U.S.C. 326[c], and Public
`Law 11249, section 13. The Board
`therefore will have exclusive
`jurisdiction within the Office over every
`application and patent that is involved
`in a derivation, IPR. PGR, or CBM
`proceeding. Ex parte reexamination
`proceedings and in for prrrtes
`reexamination proceedings are not
`“involved" patents [as defined in §42.2]
`in derivation, IPR, PGR, and CBM
`
`proceedings and are thus treated
`separately except as ordered by the
`Board.
`2. Prohibition on Ex Porte
`Communications: All substantive
`communications with the Board
`regarding a proceeding must include all
`parties to the proceeding. except as
`otherwise authorized. §42.5[d]. The
`prohibition on ex parte communications
`does not extend to: [1] Ministerial
`communications with Support Staff [for
`instance, to arrange a conference call];
`{2} conference calls or hearings in which
`opposing counsel declines to
`participate; {3} informing the Board in
`one proceeding of the existence or status
`of a related Board proceeding; or (4)
`reference to a pending case in support
`of a general proposition [for instance,
`citing a published opinion from a
`pending case or referring to a pending
`case to illustrate a systemic problem].
`Arranging a conference call’ with the
`Board. The Board encourages the use of
`conference calls to raise and resolve
`issues in an expedited manner. The
`Board envisions that most of the
`procedural issues arising during a
`proceeding will be handled during a
`conference call or shortly thereafter, r'.e.,
`in a matter of days. When arranging a
`conference call, parties should be
`prepared to discuss with a Trial Section
`paralegal why the call is needed and
`what materials may be needed during
`the call, eg., a particular exhibit.
`Refusal to participate. The Board has
`the discretion to permit a hearing or
`conference call to take place even if a
`party refuses to participate. In such
`cases, the Board may order as a
`condition for the call additional
`safeguards, such as the recording of the
`communication and the entry of the
`recording into the record.
`B. Counsel’
`
`Need for lead and back-up counsel‘. A
`party represented by counsel must
`designate both a lead as well as a back-
`up counsel who can conduct business
`on behalf ofthe lead counsel, as
`instances may arise where lead counsel
`may be unavailable. §42.1D(a).
`Power of attorney. A power of
`attorney must be filed with the
`designation of counsel. unless the
`designated counsel is already counsel of
`record. § 42.1o[b].
`Pro hac vice. The Board may
`recognize counsel pro hoc vice during a
`proceeding upon a showing of good
`cause, and subject to the requirement
`that lead counsel is a registered
`practitioner. § 42.10[c]. The Board may
`impose other considerations as well. In’.
`Proceedings before the Office can be
`technically complex. For example, it is
`
`expected that amendments to a patent
`will be sought. The grant of a motion to
`appear pro hac vice is a discretionary
`action taking into account the specifics
`ofthe proceedings. Similarly. the
`revocation of pro hac vice is a
`discretionary action taking into account
`various factors, including
`incompetence, unwillingness to abide
`by the Office’s Rules ofProfessional
`Conduct. and incivility.
`The Office expects that lead counsel
`will, and back-up counsel may,
`participate in all hearings and
`conference calls with the Board and will
`sign all papers submitted in the
`proceeding. In addition, the role of
`back-up counsel is to conduct business
`with the Office on behalf of lead counsel
`when lead counsel is not available.
`Actions not conducted before the Office
`(e.g., taking of deposition) may be
`conducted by lead or back-up counsel.
`
`C. Electronic Fiiing
`
`Electronic filing is the default manner
`in which documents are to be filed with
`the Board. § 42.6[b]. Electronic filing of
`legal documents is being implemented
`across the country in state and federal
`courts. The use of electronic filing aids
`in the efficient administration of the
`proceeding, improves public
`accessibility, and provides a more
`effective document management system
`for the Office and parties. The manner
`of submission will be established by the
`Board. The Board will publish
`electronic submission information on its
`Web site [www.uspto.gov/PTAB] in
`August of 2012. Due to system
`constraints, no single uploaded file may
`exceed 250 megabytes in size.
`Paper filing may be used where
`appropriate, but must be accompanied
`by a motion explaining the need for
`non-electronic filing. § 42.6[b]. Based
`upon experience with contested cases,
`the Board does not expect to receive
`many requests to file paper submissions.
`Circumstances where a paper filing may
`be warranted include those occasions
`where the Office's electronic filing
`system is unable to accept filings.
`Alternatively, ifa problem with
`electronic filing arises during normal
`business hours. a party may contact the
`Board and request a one-day extension
`of time for due dates that are set by rule
`or orders ofthe Board. §42.5. In the
`unlikely event that an administrative
`patent judge is not available to rule on
`the extension, the Board may grant an
`extension the day after the paper is due,
`which includes situations where
`electronic filing problems are shown to
`have occurred.
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`D. Mandatory Notices
`The rules require that parties to a
`proceeding provide certain mandatory
`notices, including identification of the
`real parties-in-interest. related matters.
`lead and back—up counsel, and service
`information. § 42.8. Where there is a
`change of information, a party must file
`a revised notice within 21 days of the
`change. §42.8[a)[3).
`‘I. Real Party-in-Interest or Privy: The
`core functions of the “real party-in-
`interest” and "privies" requirement to
`assist members of the Board in
`identifying potential conflicts, and to
`assure proper application of the
`statutory estoppel provisions. The latter,
`in turn, seeks to protect patent owners
`from harassment via successive
`petitions by the same or related parties,
`to prevent parties from having a
`“second bite at the apple," and to
`protect the integrity of both the USPTO
`and Federal Courts by assuring that all
`issues are promptly raised and vetted.
`Cf. Fed. R. Civ. P. 17(a) [Advisory
`Committee Note to 1965 Amendment to
`Rule 1?[a]} [“[T]he modern function of
`the rule in its negative aspect is simply
`to protect the defendant against a
`subsequent action by the party actually
`entitled to recover, and to insure
`generally that the judgment will have its
`proper effect as res judicata."]. The
`USPTO will apply traditional common-
`law principles with these goals in mind
`and parties will be well—served to factor
`in these considerations when
`determining whom to identify.
`Whether a party who is not a named
`participant in a given proceeding
`nonetheless constitutes a “real party-io-
`interest" or “privy" to that proceeding
`is a highly fact-dependent question. See
`generally Taylorv. Sturgell, 553 US.
`880 [2008); 18A Charles Alan Wright.
`Arthur R. Miller 8: Edward H. Cooper,
`Federal Practice 8: Procedure §§ 4449,
`4451 [2d ed. 2.011] [hereinafter “Wright
`8: Miller"]. Such questions will be
`handled by the Office on a case-by—case
`basis taking into consideration how
`courts have viewed the terms “real
`party-in-interest" and "privy.” See, e.g.,
`Taylor. 553 US. at 893w8Q5 and 893 n.6
`(noting that “[t]he list that follows is
`meant only to provide a framework [for
`the decision], not to establish a
`definitive taxonomy"). Courts invoke
`the terms “real party—in—interest" and
`“privy” to describe relationships and
`considerations sufficient to justify
`applying conventional principles of
`estoppel and preclusion. Accordingly,
`courts have avoided rigid definitions or
`recitation of necessary factors.
`Similarly, multiple Federal Rules
`invoke the terms without attempting to
`
`define them or what factors trigger their
`application. See, e.g., Fed. R. Civ. P. 17;
`Fed. Cir. R. -17.4.
`The typical common-law expression
`of the “real partyvin-interest” [the party
`“who, according to the governing
`substantive law, is entitled to enforce
`the right”) does not fit directly into the
`AIA trial context. See BA Charles Alan
`Wright, Arthur R. Miller, Mary Kay
`Kane, 8: Richard L. Marcus, Federal
`Practice 8: Procedure Civil section 1543
`(3d ed. 2011) {discussing Fed. R. Civ. P.
`1?]. That notion reflects standing
`concepts, but no such requirement
`exists in the IPR or PGR context,
`although it exists in the CBM context. In
`an IFR or PGR proceeding, there is no
`“right” being enforced since any entity
`{other than the patent owner] may file
`an IPR or PGR petition. However, the
`spirit of that formulation as to [PR and
`PGR proceedings means that, at a
`general level. the “real party-in-interest”
`is the party that desires review of the
`patent. Thus. the “real party-in-interest”
`may be the petitioner itself. and/or it
`may be the party or parties at whose
`behest the petition has been filed. In
`this regard, the Oflice’s prior
`application of similar principles in the
`inter partes reexamination context offers
`additional guidance. See generally In re
`Caan et al. Inter Partes Reexamination
`Proceeding, Control No. 95.’0El‘l,U45.
`Decision Vacating Filing Date (Aug. 25.
`2{]08]. Similar considerations apply to
`(IBM proceedings. although the statute
`governing those proceedings also
`requires that the party seeking the
`proceeding, or its real party—in—interest
`or privy, have been sued for infringing
`the subject patent, or been charged with
`infringement under that patent.
`The notion of “privity" is more
`expansive, encompassing parties that do
`not necessarily need to be identified in
`the petition as a “real party-in-interest."
`The Office intends to evaluate what
`parties constitute "privies" in a manner
`consistent with the flexible and
`equitable considerations established
`under federal caselaw. Ultimately, that
`analysis seeks to determine whether the
`relationship between the purported
`“privy" and the relevant other party is
`sufficiently close such that both should
`be bound by the trial outcome and
`related estoppels. This approach is
`consistent with the legislative history of
`the AIA, which indicates that Congress
`included “privies" within the parties
`subject to the statutory estop pel
`provisions in an effort to capture “the
`doctrine’s practical and equitable
`nature." in a manner akin to collateral
`estoppel. In that regard, the legislative
`history endorsed the expression of
`“privy" as follows:
`
`The word "privy" has acquired an
`expanded meaning. The courts. in the
`interest of justice and to prevent expensive
`litigation, are striving to give effect to
`iudgrnents by extending “privies" beyond the
`classical description. The emphasis is not on
`the concept of identity of parties, but on lhe
`practical situation. Privity is essentially a
`shorthand statement that collateral estoppel
`is to he applied in a given case: there is no
`universally applicable definition of privily.
`The concept refers to a relationship between
`the party to be estopped and the unsuccessful
`party in the prior litigation which is
`sufficiently close so as to iustify application
`of the doctrine of collateral esloppel.
`154 Cong. Rec. S9987 [daily ed. Sept.
`2?, 2003) (statement of Sen. Kyl) {citing
`Col. Physicians’ Serv. v. Aolci Diabetes
`Research Inst, 153 Cal.App.4th 1506
`(Cal. App. 2008]]: see also 157’ Cong.
`Rec. S1376 [daily ed. Mar. 8, 2011]
`(incorporating prior 2008 statement].
`Subsequent legislative history expanded
`on the prior discussion of “privy" by
`noting that “privity is an equitable rule
`that takes into account the ‘practical
`situation.’ and should extend to parties
`to transactions and other activities
`relating to the property in question.”
`157 Cong. Rec. S1376 (daily ed. Mar. 8,
`2011) [statement of Sen. Kyl}.
`There are multiple factors relevant to
`the question of whether a non—party may
`be recognized as a “real pEtI‘1y-in-
`interest” or "pi-ivy.” See. e-.g., Taylor,
`553 U.S. at 893—8Q5 and B93 t'1.6 (noting
`that “[t]he list that follows is meant only
`to provide a framework [for the
`decision], not to establish a definitive
`taxonomy”). A common consideration is
`whether the non-party exercised or
`could have exercised control over a
`party’s participation in a proceeding.
`See, e.g., id. at 895: see generally Wright
`8: Miller section 4451. The concept of
`control generally means that “it should
`be enough that the nonparty has the
`actual measure of control or opportunity
`to control that might reasonably be
`expected between two formal
`coparties." Wright 8: Miller §4451.
`Courts and commentators agree,
`however, 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" based on the control concept.
`Gonzalez v. Banco Cent. Corp., 27 F.3d
`751, 759 (1st Cir. 1994}. See also Wright
`8: Miller section 4451 (“The measure of
`control by a nonparty that justifies
`preclusion cannot be defined rigidly."].
`Accordingly, the rules do not enumerate
`particular factors regarding a “control"
`theory of “real party-in-interest" or
`“privy" under the statute.
`Additionally, many of the same
`considerations that apply in the context
`oi“'res ;'udicata" will likely apply in the
`
`5
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`
`
`48760
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`Federal Register./Vol. 77. No. 157/Tuesday. August 14, 2012/Rules and Regulations
`
`“real party-in-interest” or “privy"
`contexts. See Gonzalez, 27 F.3d at 759;
`see generally Wright 8: Miller section
`4451. Other considerations may also
`apply in the unique context of statutory
`estoppel. See generally, e.g., In re Arviv
`Reexamination Proceeding, Control No.
`95IO{]1,526, Decision Dismissing section
`1.182 and section 1.183 Petitions. at 6
`(Apr. 18. 2011]; In re Beierbach
`Reexamination Proceeding, Control No.
`95/000,407, Decision on section 1.182
`and section 1.183 Petitions, at 6 [July
`28, 2010); In re Schlecht Inter Panes
`Reexamination Proceeding, Control No.
`95:’0{]1,206, Decision Dismissing
`Petition, at 5 [Iune 22, 2010]: In re Guan
`Inter Parfes Reexamination Proceeding,
`Control No. 95/001,045, Decision
`Vacating Filing Date, at 3 (Aug. 25.
`2003i
`The Office has received requests to
`state whether particular facts will
`qualify a party as a “real party-in-
`interest" or “privy." Some fact-
`comhinations will generally justify
`applying the “real party-in-interest” or
`"privy" label. For example, a party that
`funds and directs and controls an IPR or
`PGR petition or proceeding constitutes a
`"real party-in-interest." even if that
`party is not a “privy" of the petitioner.
`But whether something less than
`complete funding and control suffices to
`justify similarly treating the party
`requires consideration ofthe pertinent
`facts. See, e.g., Cal. Physicians, 153
`Cal.App.4th at 1523-25 [discussing the
`role of control in the “privy” analysis,
`and observing that “preclusion can
`apply even in the absence of such
`control"). The Office will handle such
`questions on a case-by—case basis taking
`into consideration how courts have
`viewed the terms. Similarly. while
`generally a party does not become a
`“real party-in-interest" or a “privy” of
`the petitioner merely through
`association with another party in an
`unrelated endeavor. slight alterations in
`the facts. as well as consideration of
`other facts. might result in a different
`conclusion. So, for example, if Trade
`Association X files an IPR petition.
`Party A does not become a “real party-
`in—interest" or a “privy" of the
`Association simply based on its
`membership in the Association.
`Similarly, ifParty A is part of a Ioint
`Defense Group with Party B in a patent
`infringement suit, and Party B files a
`PGR petition. Party A is not a “real
`party-in-interest” or a “privy" for the
`purposes of the PGR petition based
`solely on its participation in that Group.
`That is not to say that Party A’s
`membership in Trade Association X, or
`the loint Defense Group, in those
`
`scenarios is irrelevant to the
`determination; deeper consideration of
`the facts in the particular case is
`necessary to determine whether Party A
`is a “real party-in-interest” or a “privy"
`of the petitioner. Relevant factors
`include: Party A’s relationship with the
`petitioner: Party A’s relationship to the
`petition itself, including the nature and/
`or degree ofinvolvement in the filing;
`and the nature of the entity filing the
`petition. In short, because rarely will
`one fact, standing alone, be
`determinative of the inquiry, the Office
`cannot preiudge the impact of a
`particular fact on whether a party is a
`“real party-in-interest” or “privy" of the
`petitioner.
`2. Related Matters: Parties to a
`proceeding are to identify any other
`judicial or administrative matter that
`would affect. or be affected by. a
`decision in the proceeding. Iudicial
`matters include actions involving the
`patent in federal court. Administrative
`matters include every application and
`patent claiming, or which may claim,
`the benefit of the priority of the filing
`date of the party's involved patent or
`application as well as any ex patio and
`inter partes reexaminations for an
`involved patent.
`3. Identification of Service
`Information: Parties are required to
`identify service information to allow for
`efficient communication between the
`Board and the parties. §-42.8.
`Additionally, while the Board is
`authorized to provide notice by means
`other than mailing to the
`correspondence address of record, it is
`ultimately the responsibility of the
`applicant