... or injury; 3) whether there are at least two parties involved in the proceeding; 4) whether the attendance of the parties is required; 5) whether one of the parties is prosecuting a claim against the other; [and] 6) whether the injured ...
Petitioner also argues that “[t]he explicit language of [35 U.S.C. § 311] indicates that [an inter partes review] is a challenge to the patent, not the patent owner,” making it “a proceeding in rem, not in personam.” Opp. 10.
Although § 311 does say, as Petitioner argues, that “a person . . . may file with the Office a petition to institute an inter partes review of the patent,” the Supreme Court has described inter partes reviews as “hybrid proceeding[s]” with both “adjudicatory characteristics [that] make these agency ...
Given the presence of “adjudicatory characteristics” that were found to make agency proceedings similar to civil litigation in FMC and Vas-Cath, we consider it more likely that inter partes reviews have sufficient in personam character for ...
... of Philippines v. Pimentel that, “where sovereign immunity is 12 IPR2016-01914 Patent 8,394,618 B2 asserted, and the claims of the sovereign are not frivolous, dismissal of the action must be ordered where there is a potential for injury ...
Accordingly, Patent Owner argues that the only way to prevent “injury to the interests of the absent sovereign” is to dismiss the action entirely.
See, e.g., Dainippon Screen Mfg. Co., Ltd. v. CFMT, Inc., 142 F.3d 1266, 1272–73 (Fed. Cir. 1998) (conducting Rule 19(b) analysis where one defendant was beyond reach of district court’s personal jurisdiction).
1 Rule 19(b) of the Federal Rules of Civil Procedure provides that “[i]f a person who is required to be joined if feasible cannot be joined, the court must determine whether, in equity and good conscience, the action should proceed among the existing parties or should be dismissed.” It goes on to state four ...