Patentee in Inter Partes Reexamination Faces Difficult Task in Proving that Real Party in Interest is not Named

Scott Daniels | June 27, 2011

The major advantage for a party requesting inter partes, rather than ex parte, reexamination is the opportunity to reply to each of the patentee’s argument throughout the proceeding.  The major disadvantage is that the requesting party must identify itself as “the real party in interest,” thereby subjecting it to the estoppel effects of 35 U.S.C. § 315(c) § 317(a) & (b).  

The “real party in interest” arises most often where a patentee sues multiple defendants for patent infringement, and one of the co-defendants requests inter partes reexamination, identifying only itself as the real party in interest.  Since the statutory inter partes estoppel effects are applicable only against the co-defendant pursuing reexamination, the patentee faces the prospect of facing the validity defenses raised in the reexamination a second time, either in the infringement litigation or in subsequent inter partes reexaminations.  This means that those co-defendants, who have not requested reexamination, stand to benefit if the reexamination is successful, but face no adverse estoppels if the reexamination is not successful.  The patentee, in such a case, will challenge the identification of a sole co-defendant in an inter partes reexamination request as failing to identify all the real parties in interest and ask the PTO to vacate the reexamination order.

This was the situation faced by Wi-Lan earlier this year (95/001,526).  It had previously sued a series of companies for infringement of its U.S. Patent No. 6,549,759, including SiRF Technology and CSR.  In January CSR requested inter partes reexamination of the ‘759 patent, identifying itself as the sole real party in interest.  Wi-Lan petitioned the PTO to “vacate the filing date” of the reexamination request.  Wi-Lan pointed out that SiRF and CSR were commonly owned corporate entities, that they had defended themselves through common counsel, and that they had asserted identical defenses in the infringement litigation.  Wi-Lan complained that the failure to name SiRF as a real party in interest constituted an improper attempt to circumvent the statutory estoppels and “open[ed] the door to potential harassment through subsequent inter partes reexamination requests by SiRF ….”

The PTO dismissed Wi-Lan’s petition.  The PTO stated its policy of not questioning the required identification of real party in interest in the request for inter partes reexamination, “except for the rare instance where a challenge to the sufficiency of the certification facially establishes that the identified real party in interest is not accurate.”  The PTO acknowledged that SiRF’s corporate relation with CSR and its participation in the infringement litigation in consort with CSR, but a “common interest among litigation defendants … [as well as the] use of the same counsel, defenses and/or counterclaims.”  It also acknowledged the benefit that SiRF might derive from the reexamination. 

But to be “a real party in interest, [the] party must participate in some manner in the request for reexamination,” there must be evidence that SiRF’s “activities were conducted with an intent to file an inter partes reexamination…”  Wi-Lan offered no such proof showing such acts by SiRF.  Also, since SiRF was not a party in the matter before the PTO, the PTO had no authority to require SiRF not engage in such acts. 

Further, the injury which Wi-Lan had alleged that it might suffer in the absence of estoppels was entirely prospective – SiRF had not filed a second inter partes reexamination request and had not improperly reasserted any defenses that had been rejected by the PTO.   

Wi-Lan, however, is not completely without recourse.  The PTO explained that the courts have the authority to investigate where the PTO lacks.  The “courts may order discovery, taking of testimony with cross-examination and use of other evidentiary tools, while enforcing compliance with its requirements via its subpoena power and power to impose sanctions.” Thus, “the courts are the forums best equipped to determine who is, and who is not, the ‘real party in interest’ when there is a reason to doubt the third party requester’s identification of a party or parties as being the real party in interest in an inter partes reexamination proceeding.” The PTO added that the “courts may provide relief, as appropriate, by enjoining the filing of a further inter partes reexamination request by the other parties in a civil action.”

Despite all this, there is a happy ending to this story for Wi-Lan: the PTO determined that the reexamination request, regardless of whether it named the correct real party, failed to raise a substantial new question of patentability, and therefore denied reexamination.

The lesson for patentees in the future is that any challenge to the identification of the real party in interest must be made in court, not at the PTO, unless the identification in the reexamination request is facially incorrect.

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