FEDERAL REGISTER
`
`Vol. 77
`
`Tuesday,
`
`No. 157
`
`August 14, 2012
`
`Part V
`
`Department of Commerce
`
`Patent and Trademark Office
`
`37 CFH Part 42
`Office Patent Trial Practice Guide: Rule
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`Federal Register.’Vol. 77. No. 157lTuesday, August 14, 2012t'Rules and Regulations
`
`DEPARTMENT OF COMMERCE
`
`Patent and Trademark Office
`
`37 CFR Part 42
`
`[Docket No. PTO-P-2011-0094]
`
`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 rulemakings, the United States
`Patent and Trademark Office [Office or
`USPTO] is revising the rules of practice
`to implement these provisions of the
`AIA 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 ‘L6.
`2012. as well as derivation proceedings
`commencing on or after March '16. 2013.
`FOR FUITITIEH INFORMATION CONTACT:
`
`Michael Tierney. Lead Administrative
`Patent Iudge. Board of Patent Appeals
`and Interferences [will be renamed as
`Patent Trial and Appeal Board on
`September 16. 2012]. by telephone at
`[571] 272—«Q7Q7.
`SUPPLEMENTARY INFOFIMJITIONI
`
`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] post-grant review
`
`[PGRl: (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. PR. and CBM 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 Offices proposed
`implementation of the new trial
`proceedings of the 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, 7? FR 5868 (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. the 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 18 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 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 complete
`the proceedin s timely.
`For the imp ementation of sections 3.
`B. 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 ofProctice for Trials before the
`
`Patent Trial and Appeal Board and
`Judicial Review ofPatent Ti‘iaI and
`Appeal Board Decisions [RIN U651-
`AC7-3]: {2} Changes to Implement Inter
`Partes Review Proceedings, Post-Grant
`Review Proceedings, and Transitional
`Program for Covered Business Method
`Patents [RIN D[551—AC71]: ts]
`Transitional Program for Covered
`Business Method Patents—Def:'nilr'ons of
`Covered Business Method Patent and
`Technological Invention [RIN 0651—
`AC?5]; and [4] Changes to Implement
`Derivation Proceedings [RIN 0651-
`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 iinal
`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 tiling ofa
`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. e.g..
`35 U.S.C. ‘t35{a] and 31’l[c]. as
`amended. and §-42.3 [references to
`§ 42.x or § 1.x refer to title 37 of the
`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 atrial 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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`'27, No. 157fTuesday, August 14. 2012r'Rules and Regulations
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`the proceedings will proceed, including
`providing for a stay, Lransfer.
`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.5.135,
`and 316, as amended, and 35 U.S.C.
`326. For example. for IPR, PGR, and
`CBM, the AIA mandates the
`promulgation of rules including motions
`to seal, procedures for filing
`supplemental in formation. 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. 31B[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 ofa
`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, unless 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 USC. 135. as amended.
`Where a trial has been instituted and
`not dismissed. the Board will issue a
`final written decision with respect to
`the involved patent andfor applications.
`35 U.S.C.135 and 35 U.S.C. 313. as
`amended. and 35 USC. 328.
`For l?R. 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 ofProceed1‘ngs:
`Generally, the proceedings begin with
`the filing ofa petition that identifies all
`of the 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
`misapprehericlecl. See § 42.7‘l{d} and [c].
`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 PCR 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 petitioners
`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:
`
`Petition
`Filed
`
`PC!
`Frelarninary
`Response
`
`Desist-an
`on
`Petition
`
`PG Response
`8. M0ll0|'1 to
`Amend Clanrns
`
`Pelitiunot
`Reply La
`PO Rasoclwae
`8. Ooousiucnn
`to Nnenontenl
`
`PO Reply
`to oppostuon
`to Amendment
`
`Ora]
`Heanng
`
`Flnat
`Written
`Decision
`
`0-->o—-> —~o—>o—->o——-»o——~o
`Nornwotttin
`3 Immiis
`1 montll
`Hosnnn 591
`alnomns
`or Request
`
`PO
`Dlsomrary
`Potion
`
`Pemoner
`Dlscovsry
`Period
`
`P0
`Disoouonu
`Panes
`
`Pancva for
`Dbsanaauons
`8. Motion: to
`Exclude Evidence
`
`
`
`Nnrlnmthnnlzmollths
`
`I
`
`Sequence of discovery. Once
`instituted. absent special circumstances.
`discovery will proceed in a sequenced
`fashion. For example, the patent owner
`
`may begin deposing the pet.itioner’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 doclarants. 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 declarants and
`file a reply in support of its 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 andior 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 Rates: The following
`is a general summary of the rules for the
`proceedings.
`1. 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];
`§ 42.561] and [b].
`
`proceedings and are thus treated
`separately except as ordered by the
`Board.
`2. Prohibition an Ex Ports
`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
`ofa 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 coil 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 ofthe
`procedural issues arising during a
`proceeding will be handled during a
`conference call or shortly thereafter. i.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. e.g.. 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
`
`A. Jurisdiction and Management of the
`Record
`
`1. Jurisdiction: 35 U.S.C. B[b], as
`amended, provides that the Board is to
`conduct derivation proceedings, inter
`portes reviews. and post-grant reviews.
`The Board also conducts Lhe transitional
`program for covered business method
`reviews, which are subject to Board
`review under 35 U.S.C. B[b], as
`amended. 35 U.S.C.. 326{c], and Public
`Law ‘l12~29, section 18. 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 inter partes
`reexamination proceedings are not
`"involved” patents [as defined in § 42.2]
`in derivation. IPR, PGR, and CBM
`
`Need for feed 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 of the lead counsel. as
`instances may arise where lead counsel
`may be unavailable. § 42.1D[a].
`Power ofatiorney. A power of
`attorney must be filed with the
`designation of counsel. unless the
`designated counsel is already counsel of
`record. §42.10[b].
`Pro hac vice. The Board may
`recognize counsel pro hac vice during a
`proceeding upon a showing of good
`cause. and subject to the requirement
`that lead counsel is a registered
`practitioner. §42.1D[c]. The Board may
`impose other considerations as well. fa‘.
`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
`of the 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 of Professional
`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 Filing
`
`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.govt'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.B[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. if a 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 of the 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 2] days of the
`change. §42.8[a][3].
`1. 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 USPTU
`and Federal Courts by assuring that all
`issues are promptly raised and vetted.
`Cf. Fed. R. Civ. P. 17[a] [Advisory
`Committee Note to 1966 Amendment to
`Rule 1'z'[a}} [“IT]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 iudicata."]. The
`USPTC) 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 part_v-in-
`interest" or "privy“ to that proceeding
`is a highly fact-dependent question. See
`gensrally Taylor v. Sturgelt, 553 U.S.
`B80 (2003); 18A Charles Alan Wright.
`Arthur R. Miller 8: Edward H. Cooper.
`Federal Practice & Procedure §§ 4449,
`4451 {2d ed. 2011] {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 13.5. at 893-895 and 393 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. 47.4.
`The typical common-law expression
`oflhe “real party-in-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, & Richard L. Marcus. Federal
`Practice 3: 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 TPR 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 IPR 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. andior it
`may be the party or parties at whose
`behest the petition has been filed. In
`this regard, the Office’s prior
`application of similar principles in the
`inter partes reexamination context offers
`additional guidance. See generally in re
`Goon et oi. Inter Partes Reexamination
`Proceeding, Control No. 95lOO1.U45.
`Decision Vacating Filing Date (Aug. 25.
`2008}. Similar considerations apply to
`CBM 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 llexible 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 estoppel
`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 iustice and to prevent expensive
`litigation. are striving to give effect to
`iuclgmenls by extending "privies" beyond the
`classical (lescription. The emphasis is not on
`the concept of identity of parties. but on the
`practical situation. P1-ivity is essentially a
`shorthand statement that collateral estoppel
`is to be applied in a given case: there is no
`universally applicable definition of privity.
`The concept refers to a relationship between
`the party to be estopped and the nnsticcessful
`party in the prior litigation which is
`sufficiently close so as to iustify application
`of the doctrine of collateral estoppel.
`
`154 Cong. Rec. S9987 [daily ed. Sept.
`27, 2003] {statement of Sen. Kyl] [citing
`Col. Physicians’ Serv. v. Aolci Diabetes
`Research Inst, 163 Cal.App.4th 1506
`(Cal. App. 2008”: See also 157 Cong.
`Rec. S13?E- {daily ed. Mar. 8, 201 1]
`[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 party-in-
`interest” or "privy." See, e.g.. Taylor.
`553 U.S. at 893-895 and 893 11.6 [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 395: see generally Wright
`& 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 & 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. Bonco 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
`of "res indicate" will likely apply in the
`
`FORD 1005
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`FORD 1005
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`Federal 1tegisterlVol. 77. No. 157lTuesday. August 14. 2o12lRules and Regulations
`
`"real party-in-interest" or “privy”
`contexts. See Gonzalez, 2? F.3d at ?59:
`see generally Wright & 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.
`95lDD1.526, Decision Disrnissing section
`1.132 and section 1.183 Petitions. at 5
`
`(Apr. 18, 2011]: ln re Beierbacli
`Reexamination Proceeding, Control No.
`95lUUU,4D7. Decision on section 1.182
`and section ‘L133 Petitions. at B [Iuly
`28. 2010}: In re Schlecht Inter Portes
`Reexamination Proceeding. Control No.
`95l001.206. Decision Dismissing
`Petition, at 5 {lune 22. 2010]: ln re Goon
`Inter Partes Reexamination Proceeding,
`Control No. 95lDD1.045. Decision
`Vacating Filing Date, at 8 (Aug. 25.
`2003].
`The Office has received requests to
`state whether particular facts will
`qualify a party as a "real party-in-
`interest” or “privy.” Some fact-
`combinations will generally justify
`applying the “real party-in-interest“ or
`“privy” label. For example, a party that
`funds and directs and controls an [PR 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 of the pertinent
`facts. See, e.g., Col. Physicians, 163
`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" ofthe
`Association simply based on its
`membership in the Association.
`Similarly. if Party A is part of a Eoint
`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 Ioint 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 of involvement 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 prejudge the impact ofa
`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
`iudicial 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 ports and
`inter partes ree:-carninations for an
`involved patent.
`3. Identification of Service
`lnformotion: Parties are required to
`identify service information to allow for
`efficient communication between the
`Board and the parties. §42.B.
`Additionally. while the Board is
`authorized to provide notice by means
`other than mailing to the
`cor