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IPO Daily News™

Wednesday, 17 April 2019

USPTO Provides Guidance on Real-Parties in Interest

USPTO PROVIDES GUIDANCE ON REAL-PARTIES IN INTEREST

Yesterday the USPTO’s Patent Trial and Appeal Board designated three opinions as “precedential.” In Adello Biologics LLC v. Amgen Inc., the three-judge panel granted Adello’s pre-institution request to correct its mandatory notices to add a real party in interest that was not named in its petition for post-grant review. The panel rejected Amgen’s argument that “because Petitioners did not identify all RPIs, they are ‘indisputably time-barred,’” ordering that the filing date of the petition would remain unchanged. In Proppant Express Invs., LLC v. Oren Techs., LLC, a panel denied Oren’s motion to terminate inter partes review. Following the Federal Circuit’s issuance of two opinions concerning the determination of whether an entity is a real party in interest, the panel had allowed Proppant to correct its mandatory notices post-institution to add two real parties in interest and had not given the petition a new filing date. It explained that PTAB may “accept updated mandatory notices as long as the petition would not have been time-barred under 35 U.S.C. § 315(b) if it had included the real party in interest.”

In Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., a panel terminated an inter partes review proceeding because the petition had failed to name a time-barred real party in interest. Columbia had served a complaint on Seirus more than a year before Ventex’s petition was filed. The panel found that Seirus was a real party in interest because it had a preexisting, exclusive business relationship with Ventex related to the accused product and that it would directly benefit from Ventex’s efforts to invalidate Columbia’s patents. The panel also found that the two companies were in privity based on their “preexisting substantive legal relationship” that was “directly related to the product accused of infringing the patent at issue in this proceeding.” Moreover, Columbia had presented evidence sufficient to support a conclusion that Ventex was pursuing the IPR as a proxy for Seirus, which was funding the IPRs.

IPO SEEKS CANDIDATES FOR EXECUTIVE DIRECTOR

IPO is seeking an Executive Director to lead the strategic priorities for IPO’s staff, programs, expansion, and execution of its mission. The Executive Director works directly with the Officers, Executive Committee and 50-member Board of Directors in this effort.

IPO, established in 1972, is a trade association for owners of patents, trademarks, copyrights and trade secrets. IPO serves all intellectual property owners in all industries and all fields of technology. As owners of intellectual property we believe that intellectual property rights accelerate the innovation, creativity, and investment necessary to address major global challenges and improve lives. We strive to maximize innovation across all industries and improve lives throughout the world by fostering high quality rights and effective, harmonized systems to obtain and enforce them, on behalf of all our members.

For more information, please visit our website. To apply, please send a cover letter and a copy of your CV to recruiting@exudeinc.com.

IP IN THE MASS MEDIA

Qualcomm and Apple Agree to End Litigation Worldwide

Yesterday Qualcomm and Apple announced that they reached a settlement agreement to end all worldwide litigation. In addition to Apple’s payment of undisclosed sum to Qualcomm, the companies entered into a licensing agreement and an agreement to supply chips. (New York Times)

REGISTER FOR IPO’S EUROPEAN PRACTICE CONFERENCE ON 2 MAY IN BASEL, SWITZERLAND

For the 8th year, IPO’s European Practice Committee is organizing a conference entitled “The Ever-Changing IP Landscape: Patents, Trademarks, and Trade Secrets in 2019 and Beyond.” The 2019 event will take place on 2 May and is being organized in cooperation with the Law Faculty of the University of Basel, Switzerland. Topics include how to protect your data after the Trade Secrets Directive, equivalent patent infringement, the current critique of the patent system, and trademark matters. The conference includes presentations from in-house and outside counsel as well as experts from academia and the courts. For more information or to register, visit www.ipo.org/Europe19.


Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.


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