Terms and Concepts
Real Party in Interest
While ex parte reexamination requests may be filed anonymously by any party, at any time, inter partes reexamination requests must identify the real party in interest filing the request [37 C.F.R. § 1.510(b),(f)]. The real party in interest requirement is closely tied to the inter partes reexamination estoppel provisions [MPEP § 2612 (“note that it is the real party in interest that is subject to the estoppel provisions and not the party who actually filed the request.”)]. The estoppel provisions of 35 U.S.C. § 317(b) apply to the “third party requester” and “its privies.” The real party in interest disclosure therefore must be “to the extent necessary for a subsequent person filing an inter partes reexamination request to determine whether that person is a privy” [37 C.F.R. § 1.915(b)(8)].
The PTO currently is struggling with the real party in interest rule where there is concurrent district court litigation with multiple defendants. Typically, in a multi-defendant litigation, the group of defendants will create a joint defense group (“JDG”). Issues occur when one or more defendants, but not all, file an inter partes reexamination request. For instance, the filing defendant (or defendants) may have minimal infringement exposure but is alleged or believed to be acting as a surrogate for the other defendants who are not officially part of the inter partes reexamination and thus not bound by the estoppel provisions [35 U.S.C. §§ 315(b) and 316(b)]. An alternative scenario is that the defendant filing the inter partes reexamination request is doing so on its own initiative, and perhaps against the wishes of one or more co-defendants.
In such situations, who is the real party in interest? Just the third party requester or the entire JDG? Just those JDG members who have concurred with the reexamination strategy? Just those JDG members who have provided prior art, research, review, analysis, drafts, staffing support, financial backing, concurrence on actual filings, approval of filings, etc.? The authors are aware of several cases involving various flavors of this scenario where the patent owner has filed a petition to vacate the reexamination order, or suspend the reexamination, on the grounds that the real party in interest has not been identified and the PTO therefore lacks jurisdiction to continue reexamination proceedings [Reexamination Control Nos. 95/000,227 and 95/000,229]. Where the parties disagree on the facts, the PTO takes the position that it has not been vested with the tools, such as a subpoena power, statutory authority, or a discovery process in reexamination proceedings, necessary to make a proper factual determination. Nor is there clear guidance in the inter partes reexamination statute, its legislative history, the PTO rules, or from the courts as to how to resolve such real party-in-interest issues which are real but are often ignored in practice.
Perhaps most importantly, petitions for challenging the real party in interest are not handled by the CRU but are referred to the Office of Patent Legal Administration (“OPLA”). These petitions take time and often significant resources to resolve and are perceived by some as being directly contrary to the statutory requirement that the PTO act with “special dispatch.” As one OPLA official has stated, such petitions act as an “anchor” on reexamination proceedings that bring it to a standstill or even prevent the reexamination from getting underway.
There is at least one case where the PTO has dismissed an inter partes reexamination where the real party in interest was not identified to its satisfaction [Reexamination Control No. 95/001,045]. The request was filed by an entity calling itself “Troll Busters.” The requester’s website describes its service as completely anonymous: “Troll Busters takes aim and fires in our own name. The Patent Troll will never know who or how many are behind the ‘hit’” [http://www.troll-busters.com/]. In practice, the PTO generally will not look beyond the required statement identifying the real party in interest unless it is not facially accurate or is ambiguous. In the Troll Busters case, based on the information posted on the Troll Busters web pages, the PTO issued a show cause order to establish the identity of the real party in interest. The PTO was not persuaded by the response and terminated the reexamination stating that “Troll Busters cannot act as a ‘shill’ in an inter partes reexamination request to shield the identity of the real party or parties in interest” [Reexamination Control No. 95/001,045, “Decision Vacating Filing Date,” p. 7 (mailed Aug 25, 2008)]. This is the only case of which the authors are aware in which the PTO has terminated an inter partes reexamination request based on a finding of a violation of the real party in interest requirement.
The Troll Busters case establishes several important considerations for challenging the real party in interest. First, “extrinsic evidence may be submitted by the patent owner to support a petition to vacate the filing date or the Office may use extrinsic evidence to, sua sponte, order the requester/real party in interest to show cause.” Second, the PTO stated that “[a]n entity named as the sole real party in interest may not receive a suggestion from another party that a particular patent should be the subject of a request for inter partes reexamination and be compensated by that party for the filing of the request … without naming the party who suggested and compensated the entity for the filing of a request.” Finally, the PTO explicitly noted that ex parte reexamination was still an option for Troll Busters.
In sum, the PTO has a limited ability and appetite to resolve real party in interest disputes in the context of inter partes reexamination proceedings because the PTO does not have the discovery mechanisms in reexamination proceedings and resources to mediate or decide such a dispute. However, the “Troll Busters” case shows that an insufficient response to a show cause order may result in dismissal of the inter partes reexamination.
When a final decision in an inter partes reexamination is favorable to patentability, the estoppel provisions of 35 U.S.C. § 315(c) attaches to the civil action. Although the PTO has limited ability to investigate and resolve real party in interest issues for PTO proceedings, some practitioners argue that a district court should investigate the true interested prior to instituting the estoppels in the litigation, particularly in multi-party litigation. This is a hot area of dispute, and the authors expect to see more developments over the next year.