Interested Party Issues May Play Bigger Role After PTAB Move

Patent owners have a new way to seek the denial of petitions challenging patents, now that a decision that limited when the Patent Trial and Appeal Board must consider whether a patent challenger named all the interested parties is no longer precedential, attorneys say.

The U.S. Patent and Trademark Office announced Sept. 26 that a 2020 decision that the PTAB only needed to analyze the interested parties in a few situations had been de-designated as precedential and is not binding on the board.

The decision, SharkNinja Operating v. iRobot , concluded that the board did not need to resolve whether the petitioner named all real parties in interest, unless the patent owner alleged that an unnamed party could result in the petition being time-barred or the petitioner being estopped from proceeding with the case.

“However, disclosure of [real parties in interest] serves purposes other than time-bar and estoppel issues,” the USPTO said last week when it announced the removal of the precedential status the decision was given during the first Trump administration. The brief notice came about a week after Trump nominee John Squires was confirmed as the office’s new director.

Attorneys said it’s not clear when the interested party issue might now be found relevant by the board, but the change clears the way for patent owners to argue more often that the inter partes review challenge should be denied because the petitioner didn’t name every entity with an interest in the case.

“This is probably going to encourage some patent owners to basically use that as another arrow in their quiver to try to obtain denial of institution,” said Alex Yap of Morrison Foerster LLP, a former PTAB judge.

In recent months, the office has placed a strong emphasis on determining whether petitions challenging patents should be denied for discretionary reasons, with USPTO Deputy Director Coke Morgan Stewart making those decisions before the board considers the merits.

Discretionary denials have been issued when a district court trial is scheduled to take place before the board’s final decision would be due, and when the patent owner is found to have had “settled expectations” that the patent would not be challenged. If the PTAB more closely scrutinizes who the interested parties are, “that could affect some of the discretionary denial factors,” said Jeff Saltman of Cole Schotz PC.

He used the example of an argument from a patent owner that an unnamed party with an interest in the petition had knowledge of the patent for an extended period of time, and that that knowledge is relevant to the patent owner’s settled expectations.

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