Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2017-01917, Paper No. 86, U.S. Patent No. 9,296,518 B2
[Deciding Whether a Petitioner Can Update its Mandatory Notices While Maintaining the Original Filing Date]
Patent Owner argued against the institution of an IPR on the basis that Liberty Oilfield Services (Liberty) was an unnamed real party in interest, but an IPR was instituted anyway. In its Patent Owner Response, Patent Owner additionally argued that Big Box Proppant Investments (Big Box) was also an unnamed real party in interest.
After this, Applications in Internet Time was decided, which instructed the PTAB to use a more flexible approach in evaluating whether a party is a real party in interest, focusing on “whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018). Additionally, the decision in Worlds Inc. weakened the PTAB’s presumption that the petitioner’s listing of the real parties in interest is correct. Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018).
The PTAB then issued its decision on the institution of an IPR, agreeing with Petitioner that Big Box is not a real party in interest, but mentioning that Liberty might be a real party in interest. The PTAB granted Patent Owner permission to file a motion to terminate and a motion for additional discovery and Petitioner permission to update its notices to name Liberty as a real party in interest. The petitioner updated its notices to name Liberty and Big Box and the patent owner filed a motion to terminate.
Petitioner is allowed to update its mandatory notices, while keeping the proceeding’s original filing date.
The board may accept updated, mandatory notices, so long as the petition would not have been bared had it originally included the real party in interest. In this case, the petition would not have been bared by § 315(b) because none of the alleged real parties in interest had been served with a complaint more than one year before the filing of the IPR decision.
Also, the board looks at whether there have been (1) attempts to circumvent the § 315(b) bar, (2) bad faith, (3) prejudice to the patent owner because of the delay, or (4) gamesmanship by the petitioner. There was no allegation of attempts to circumvent the § 315(b) bar, nor specific allegations of bad faith. The dispute was in good faith, so having to litigate it was not prejudice. There is no evidence of gamesmanship because the petitioner, in updating its mandatory notices, was responding to changes in the case law. Finally, while Petitioner only named possible real parties in interest without admitting that they were real parties in interest, this approach has been endorsed by the PTAB.
The PTAB can accept updated, mandatory notices, so long as the petition would not have been bared had they originally been included and so long as there have been no (1) attempts to circumvent the § 315(b) bar, (2) bad faith, (3) prejudice to the patent owner because of the delay, or (4) gamesmanship by the petitioner. Additionally, the petitioner is allowed to disclose real parties in interest without admitting that they are actually real parties in interest.
A copy of the actual decision can be found here.