Vol. 77
`No. 157
`
`Tuesday,
`August 14, 2012
`
`Part V
`
`Department of Commerce
`
`Patent and Trademark Office
`37 CFR Part 42
`Office Patent Trial Practice Guide; Rule
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`48756
`
`Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations
`
`DEPARTMENT OF COMMERCE
`
`Patent and Trademark Office
`
`37 CFR Part 42
`[Docket No. PTO–P–2011–0094]
`
`Office Patent Trial Practice Guide
`AGENCY: United States Patent and
`Trademark Office, Commerce.
`ACTION: Notice of practice guide.
`
`SUMMARY: The Leahy-Smith America
`Invents Act (AIA) establishes several
`new trial proceedings to be conducted
`by the Patent Trial and Appeal Board
`(Board) including inter partes review,
`post-grant review, the transitional
`program for covered business method
`patents, and derivation proceedings. In
`separate rulemakings, the United States
`Patent and Trademark Office (Office or
`USPTO) is revising the rules of practice
`to implement these provisions of the
`AIA that provide for the trial
`proceedings before the Board. The
`Office publishes in this notice a practice
`guide for the trial final rules to advise
`the public on the general framework of
`the regulations, including the structure
`and times for taking action in each of
`the new proceedings.
`DATES: Effective Date: This practice
`guide applies to inter partes review,
`post-grant review, and covered business
`method patent review proceedings
`commencing on or after September 16,
`2012, as well as derivation proceedings
`commencing on or after March 16, 2013.
`FOR FURTHER INFORMATION CONTACT:
`Michael Tierney, Lead Administrative
`Patent Judge, Board of Patent Appeals
`and Interferences (will be renamed as
`Patent Trial and Appeal Board on
`September 16, 2012), by telephone at
`(571) 272–9797.
`SUPPLEMENTARY INFORMATION:
`Executive Summary: The patent trial
`regulations lay out a framework for
`conducting the proceedings aimed at
`streamlining and converging the issues
`for decision. In doing so, the Office’s
`goal is to conduct proceedings in a
`timely, fair, and efficient manner.
`Further, the Office has designed the
`proceedings to allow each party to
`determine the preferred manner of
`putting forward its case, subject to the
`guidance of judges who determine the
`needs of a particular case through
`procedural and substantive rulings
`throughout the proceedings.
`Background: The Leahy-Smith
`America Invents Act establishes several
`new trial proceedings to be conducted
`by the Board including: (1) Inter partes
`review (IPR); (2) post-grant review
`
`(PGR); (3) a transitional program for
`covered business method patents
`(CBM); and (4) derivation proceedings.
`The AIA requires the Office to
`promulgate rules for the proceedings,
`with the PGR, IPR, and CBM rules to be
`in effect one year after AIA enactment
`and the derivation rules to be in effect
`18 months after AIA enactment.
`Consistent with the statute, the Office
`published a number of notices of
`proposed rulemaking in February of
`2012, and requested written comments
`on the Office’s proposed
`implementation of the new trial
`proceedings of the AIA. The Office also
`hosted a series of public educational
`roadshows, across the country,
`regarding the proposed rules.
`Additionally, the Office published a
`practice guide based on the proposed
`trial rules in the Federal Register to
`provide the public an opportunity to
`comment. Practice Guide for Proposed
`Trial Rules, 77 FR 6868 (Feb. 9, 2012)
`(Request for Comments) (hereafter
`‘‘Practice Guide for Proposed Trial
`Rules’’ or ‘‘Office Patent Trial Practice
`Guide’’). This Office Patent Trial
`Practice Guide is intended to advise the
`public on the general framework of the
`rules, including the structure and times
`for taking action in each of the new
`proceedings.
`In response to the notices of proposed
`rulemaking and the Practice Guide
`notice, the Office received 251
`submissions of written comments from
`intellectual property organizations,
`businesses, law firms, patent
`practitioners, and others, including a
`United States senator who was a
`principal author of section 18 of the
`AIA. The comments provided support
`for, opposition to, and diverse
`recommendations on the proposed
`rules. The Office appreciates the
`thoughtful comments, and has
`considered and analyzed the comments
`thoroughly. In light of the comments,
`the Office has made modifications to the
`proposed rules to provide clarity and to
`balance the interests of the public,
`patent owners, patent challengers, and
`other interested parties, in light of the
`statutory requirements and
`considerations, such as the effect of the
`regulations on the economy, the
`integrity of the patent system, the
`efficient administration of the Office,
`and the ability of the Office to complete
`the proceedings timely.
`For the implementation of sections 3,
`6, 7, and 18 of the AIA that are related
`to administrative trials and judicial
`review of Board decisions, the Office is
`publishing the following final rules in
`separate notices in the Federal Register:
`(1) Rules of Practice for Trials before the
`
`Patent Trial and Appeal Board and
`Judicial Review of Patent Trial and
`Appeal Board Decisions (RIN 0651–
`AC70); (2) Changes to Implement Inter
`Partes Review Proceedings, Post-Grant
`Review Proceedings, and Transitional
`Program for Covered Business Method
`Patents (RIN 0651–AC71); (3)
`Transitional Program for Covered
`Business Method Patents—Definitions of
`Covered Business Method Patent and
`Technological Invention (RIN 0651–
`AC75); and (4) Changes to Implement
`Derivation Proceedings (RIN 0651–
`AC74). The Office also provides
`responses to the public written
`comments in these final rules in the
`Response to Comments sections of the
`notices.
`Further, the Office revised the Office
`Patent Trial Practice Guide based on the
`final rules. The Office has been working
`diligently to publish all of the final rules
`related to the new AIA trial proceedings
`and the Office Patent Trial Practice
`Guide in the Federal Register
`concurrently. Due to certain limitations,
`however, the Office Patent Trial Practice
`and the specific final rule for derivation
`proceedings will be published in the
`Federal Register after the other final
`rules. In particular, the specific rules for
`derivation, i.e., §§ 42.404 through
`42.412, will be published at a later date.
`Statutory Requirements: The AIA
`provides certain minimum requirements
`for each of the new proceedings.
`Provided below is a brief overview of
`these requirements.
`Proceedings begin with the filing of a
`petition to institute a trial. The petition
`must be filed with the Board consistent
`with any time period required by statute
`and be accompanied by the evidence the
`petitioner seeks to rely upon. See, e.g.,
`35 U.S.C. 135(a) and 311(c), as
`amended, and § 42.3 (references to
`§ 42.x or § 1.x refer to title 37 of the
`Code of Federal Regulations). For IPR,
`PGR, and CBM, the patent owner is
`afforded an opportunity to file a
`preliminary response. 35 U.S.C. 313, as
`amended, and 35 U.S.C. 323.
`The Board acting on behalf of the
`Director may institute a trial where the
`petitioner establishes that the standards
`for instituting the requested trial are met
`taking into account any preliminary
`response filed by the patent owner.
`Conversely, the Board may not
`authorize a trial where the information
`presented in the petition, taking into
`account any patent owner preliminary
`response, fails to meet the requisite
`standard for instituting the trial. See
`e.g., 35 U.S.C. 314, as amended, and 35
`U.S.C. 324. Where there are multiple
`matters in the Office involving the same
`patent, the Board may determine how
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`Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations
`
`48759
`
`D. Mandatory Notices
`The rules require that parties to a
`proceeding provide certain mandatory
`notices, including identification of the
`real parties-in-interest, related matters,
`lead and back-up counsel, and service
`information. § 42.8. Where there is a
`change of information, a party must file
`a revised notice within 21 days of the
`change. § 42.8(a)(3).
`g §
`( )( )
`1. Real Party-in-Interest or Privy: The
`
`1. Real Party-in-Interest or Privy: They y
`
`core functions of the ‘‘real party-in-
`
`core functions of the ‘‘real party-in- p y
`interest’’ and ‘‘privies’’ requirement to
`
`interest’’ and ‘‘privies’’ requirement to p q
`
`assist members of the Board in
`assist members of the Board in
`identifying potential conflicts, and to
`
`identifying potential conflicts, and to y g p
`assure proper application of the
`
`assure proper application of the p p pp
`
`statutory estoppel provisions. The latter,
`
`statutory estoppel provisions. The latter, y pp p
`
`in turn, seeks to protect patent owners
`
`in turn, seeks to protect patent owners p p
`
`from harassment via successive
`from harassment via successive
`petitions by the same or related parties,
`
`petitions by the same or related parties, p y
`
`to prevent parties from having a
`
`to prevent parties from having a p p g
`
`
`‘‘second bite at the apple,’’ and to
`
`‘‘second bite at the apple,’’ and to pp
`protect the integrity of both the USPTO
`
`protect the integrity of both the USPTO p g y
`
`and Federal Courts by assuring that all
`
`and Federal Courts by assuring that all y g
`
`issues are promptly raised and vetted.
`
`issues are promptly raised and vetted. p p y
`
`Cf. Fed. R. Civ. P. 17(a) (Advisory
`
`Cf. Fed. R. Civ. P. 17(a) (Advisory f y
`
`Committee Note to 1966 Amendment to
`Committee Note to 1966 Amendment to
`Rule 17(a)) (‘‘[T]he modern function of
`Rule 17(a)) (‘‘[T]he modern function of
`the rule in its negative aspect is simply
`
`the rule in its negative aspect is simply g p
`
`to protect the defendant against a
`
`to protect the defendant against ap g
`
`subsequent action by the party actually
`
`subsequent action by the party actually q y p y
`
`
`entitled to recover, and to insure
`entitled to recover, and to insure
`generally that the judgment will have its
`
`generally that the judgment will have its g y j g
`
`
`
`proper effect as res judicata.’’). The
`
`proper effect as res judicata.’’). Thep p j
`
`USPTO will apply traditional common-
`
`USPTO will apply traditional common- pp y
`law principles with these goals in mind
`
`law principles with these goals in mind p p g
`
`
`and parties will be well-served to factor
`
`and parties will be well-served to factor p
`in these considerations when
`in these considerations when
`determining whom to identify.
`determining whom to identify.
`Whether a party who is not a named
`participant in a given proceeding
`nonetheless constitutes a ‘‘real party-in-
`interest’’ or ‘‘privy’’ to that proceeding
`is a highly fact-dependent question. See
`generally Taylor v. Sturgell, 553 U.S.
`880 (2008); 18A Charles Alan Wright,
`Arthur R. Miller & Edward H. Cooper,
`Federal Practice & Procedure §§ 4449,
`4451 (2d ed. 2011) (hereinafter ‘‘Wright
`& Miller’’). Such questions will be
`handled by the Office on a case-by-case
`basis taking into consideration how
`courts have viewed the terms ‘‘real
`party-in-interest’’ and ‘‘privy.’’ See, e.g.,
`Taylor, 553 U.S. at 893–895 and 893 n.6
`(noting that ‘‘[t]he list that follows is
`meant only to provide a framework [for
`the decision], not to establish a
`definitive taxonomy’’). Courts invoke
`the terms ‘‘real party-in-interest’’ and
`‘‘privy’’ to describe relationships and
`considerations sufficient to justify
`applying conventional principles of
`estoppel and preclusion. Accordingly,
`courts have avoided rigid definitions or
`recitation of necessary factors.
`Similarly, multiple Federal Rules
`invoke the terms without attempting to
`
`define them or what factors trigger their
`application. See, e.g., Fed. R. Civ. P. 17;
`Fed. Cir. R. 47.4.
`The typical common-law expression
`of the ‘‘real party-in-interest’’ (the party
`‘‘who, according to the governing
`substantive law, is entitled to enforce
`the right’’) does not fit directly into the
`AIA trial context. See 6A Charles Alan
`Wright, Arthur R. Miller, Mary Kay
`Kane, & Richard L. Marcus, Federal
`Practice & Procedure Civil section 1543
`(3d ed. 2011) (discussing Fed. R. Civ. P.
`17). That notion reflects standing
`concepts, but no such requirement
`exists in the IPR or PGR context,
`although it exists in the CBM context. In
`an IPR or PGR proceeding, there is no
`‘‘right’’ being enforced since any entity
`(other than the patent owner) may file
`an IPR or PGR petition. However, the
`spirit of that formulation as to IPR and
`PGR proceedings means that, at a
`general level, the ‘‘real party-in-interest’’
`is the party that desires review of the
`patent. Thus, the ‘‘real party-in-interest’’
`may be the petitioner itself, and/or it
`may be the party or parties at whose
`behest the petition has been filed. In
`this regard, the Office’s prior
`application of similar principles in the
`inter partes reexamination context offers
`additional guidance. See generally In re
`Guan et al. Inter Partes Reexamination
`Proceeding, Control No. 95/001,045,
`Decision Vacating Filing Date (Aug. 25,
`2008). Similar considerations apply to
`CBM proceedings, although the statute
`governing those proceedings also
`requires that the party seeking the
`proceeding, or its real party-in-interest
`or privy, have been sued for infringing
`the subject patent, or been charged with
`infringement under that patent.
`g
`p
`The notion of ‘‘privity’’ is more
`
`The notion of ‘‘privity’’ is more p y
`
`expansive, encompassing parties that do
`
`expansive, encompassing parties that do p p g p
`
`
`not necessarily need to be identified in
`
`not necessarily need to be identified in y
`the petition as a ‘‘real party-in-interest.’’
`
`the petition as a ‘‘real party-in-interest.’’p p y
`
`The Office intends to evaluate what
`The Office intends to evaluate what
`parties constitute ‘‘privies’’ in a manner
`
`parties constitute ‘‘privies’’ in a mannerp p
`
`consistent with the flexible and
`consistent with the flexible and
`equitable considerations established
`
`equitable considerations established q
`under federal caselaw. Ultimately, that
`under federal caselaw.
`analysis seeks to determine whether the
`relationship between the purported
`‘‘privy’’ and the relevant other party is
`sufficiently close such that both should
`be bound by the trial outcome and
`related estoppels. This approach is
`consistent with the legislative history of
`the AIA, which indicates that Congress
`included ‘‘privies’’ within the parties
`subject to the statutory estoppel
`provisions in an effort to capture ‘‘the
`doctrine’s practical and equitable
`nature,’’ in a manner akin to collateral
`estoppel. In that regard, the legislative
`history endorsed the expression of
`‘‘privy’’ as follows:
`
`The word ‘‘privy’’ has acquired an
`expanded meaning. The courts, in the
`interest of justice and to prevent expensive
`litigation, are striving to give effect to
`judgments by extending ‘‘privies’’ beyond the
`classical description. The emphasis is not on
`the concept of identity of parties, but on the
`practical situation. Privity is essentially a
`shorthand statement that collateral estoppel
`is to be applied in a given case; there is no
`universally applicable definition of privity.
`The concept refers to a relationship between
`the party to be estopped and the unsuccessful
`party in the prior litigation which is
`sufficiently close so as to justify application
`of the doctrine of collateral estoppel.
`154 Cong. Rec. S9987 (daily ed. Sept.
`27, 2008) (statement of Sen. Kyl) (citing
`Cal. Physicians’ Serv. v. Aoki Diabetes
`Research Inst., 163 Cal.App.4th 1506
`(Cal. App. 2008)); see also 157 Cong.
`Rec. S1376 (daily ed. Mar. 8, 2011)
`(incorporating prior 2008 statement).
`p
`g p
`Subsequent legislative history expanded
`
`Subsequent legislative history expanded q g y p
`
`
`
`on the prior discussion of ‘‘privy’’ by
`
`on the prior discussion of ‘‘privy’’ by p p y y
`
`
`
`noting that ‘‘privity is an equitable rule
`
`noting that ‘‘privity is an equitable rule g p y q
`
`
`
`that takes into account the ‘practical
`
`that takes into account the ‘practical p
`situation,’ and should extend to parties
`
`situation,’ and should extend to parties p
`to transactions and other activities
`to transactions and other activities
`relating to the property in question.’’
`
`relating to the property in question.’’ g p p y q
`
`
`157 Cong. Rec. S1376 (daily ed. Mar. 8,
`
`157 Cong. Rec. S1376 (daily ed. Mar. 8,g y
`
`2011) (statement of Sen. Kyl).
`2011) (statement of Sen. Kyl).
`There are multiple factors relevant to
`the question of whether a non-party may
`be recognized as a ‘‘real party-in-
`interest’’ or ‘‘privy.’’ See, e.g., Taylor,
`553 U.S. at 893–895 and 893 n.6 (noting
`that ‘‘[t]he list that follows is meant only
`to provide a framework [for the
`decision], not to establish a definitive
`taxonomy’’). A common consideration is
`whether the non-party exercised or
`could have exercised control over a
`party’s participation in a proceeding.
`See, e.g., id. at 895; see generally Wright
`& Miller section 4451. The concept of
`control generally means that ‘‘it should
`be enough that the nonparty has the
`actual measure of control or opportunity
`to control that might reasonably be
`expected between two formal
`coparties.’’ Wright & Miller § 4451.
`Courts and commentators agree,
`however, that there is no ‘‘bright-line
`test’’ for determining the necessary
`quantity or degree of participation to
`qualify as a ‘‘real party-in-interest’’ or
`‘‘privy’’ based on the control concept.
`Gonzalez v. Banco Cent. Corp., 27 F.3d
`751, 759 (1st Cir. 1994). See also Wright
`& Miller section 4451 (‘‘The measure of
`control by a nonparty that justifies
`preclusion cannot be defined rigidly.’’).
`Accordingly, the rules do not enumerate
`particular factors regarding a ‘‘control’’
`theory of ‘‘real party-in-interest’’ or
`‘‘privy’’ under the statute.
`Additionally, many of the same
`considerations that apply in the context
`of ‘‘res judicata’’ will likely apply in the
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`48760
`
`Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulations
`
`2. Confidential information: The rules
`identify confidential information in a
`manner consistent with Federal Rule of
`Civil Procedure 26(c)(1)(G), which
`provides for protective orders for trade
`secret or other confidential research,
`development, or commercial
`information. § 42.54.
`3. Motion To Seal: A party intending
`a document or thing to be sealed may
`file a motion to seal concurrent with the
`filing of the document or thing. § 42.14.
`The document or thing will be
`provisionally sealed on receipt of the
`motion and remain so pending the
`outcome of the decision on motion.
`4. Protective Orders: A party may file
`a motion to seal where the motion
`contains a proposed protective order,
`such as the default protective order in
`Appendix B. § 42.54. Specifically,
`protective orders may be issued for good
`cause by the Board to protect a party
`from disclosing confidential
`information. § 42.54. Guidelines on
`proposing a protective order in a motion
`to seal, including a Standing Protective
`Order, are provided in Appendix B. The
`document or thing will be protected on
`receipt of the motion and remain so,
`pending the outcome of the decision on
`motion.
`5. Confidential Information in a
`Petition: A petitioner filing confidential
`information with a petition may,
`concurrent with the filing of the
`petition, file a motion to seal with a
`proposed protective order as to the
`confidential information. A petitioner
`filing information under seal with a
`petition is not required to serve the
`confidential information. § 42.55.
`A petitioner may seek entry of the
`default protective order in Appendix B
`or may seek entry of an alternative
`protective order. Where the petitioner
`seeks entry of the default protective
`order, the patent owner will be given
`access to the confidential information
`prior to institution of the trial by
`agreeing to the terms of a default order.
`§ 42.55(a). The Board anticipates that a
`patent owner may use the Board’s
`electronic filing system to agree to the
`default protective order and would,
`upon confirmation of the agreement by
`the Board, be given access to the
`provisionally sealed information.
`Where a petitioner files a motion to
`seal with the petition that seeks entry of
`a protective order other than the default
`protective order, a patent owner may
`only access the sealed confidential
`information prior to the institution of
`the trial by:
`(1) Agreeing to the terms of the
`protective order requested by the
`petitioner;
`
`scenarios is irrelevant to the
`determination; deeper consideration of
`
`deeper consideration of p
`the facts in the particular case is
`
`the facts in the particular case isp
`necessary to determine whether Party A
`
`necessary to determine whether Party Ay y
`
`is a ‘‘real party-in-interest’’ or a ‘‘privy’’
`
`is a ‘‘real party-in-interest’’ or a ‘‘privy’’ p y p
`
`of the petitioner. Relevant factors
`
`of the petitioner. Relevant factors p
`include: Party A’s relationship with the
`
`include: Party A’s relationship with the y p
`
`petitioner; Party A’s relationship to the
`
`petitioner; Party A’s relationship to the p y p
`
`
`petition itself, including the nature and/
`
`petition itself, including the nature and/ p g
`
`or degree of involvement in the filing;
`
`or degree of involvement in the filing; g g
`
`and the nature of the entity filing the
`
`and the nature of the entity filing they g
`
`petition. In short, because rarely will
`petition. In short, because rarely will
`one fact, standing alone, be
`
`ne fact, standing alone, be g
`determinative of the inquiry, the Office
`
`determinative of the inquiry, the Office q y
`
`cannot prejudge the impact of a
`
`cannot prejudge the impact of ap j g p
`
`
`particular fact on whether a party is a
`
`particular fact on whether a party is ap p y
`
`
`‘‘real party-in-interest’’ or ‘‘privy’’ of the
`
`‘‘real party-in-interest’’ or ‘‘privy’’ of the p y
`petitioner.
`petitioner.
`2. Related Matters: Parties to a
`proceeding are to identify any other
`judicial or administrative matter that
`would affect, or be affected by, a
`decision in the proceeding. Judicial
`matters include actions involving the
`patent in federal court. Administrative
`matters include every application and
`patent claiming, or which may claim,
`the benefit of the priority of the filing
`date of the party’s involved patent or
`application as well as any ex parte and
`inter partes reexaminations for an
`involved patent.
`3. Identification of Service
`Information: Parties are required to
`identify service information to allow for
`efficient communication between the
`Board and the parties. § 42.8.
`Additionally, while the Board is
`authorized to provide notice by means
`other than mailing to the
`correspondence address of record, it is
`ultimately the responsibility of the
`applicant or patent owner to maintain a
`proper correspondence address in the
`record. Ray v. Lehman, 55 F.3d 606, 610
`(Fed. Cir. 1995).
`Under § 42.6(e), service may be made
`electronically upon agreement of the
`parties. For example, the parties could
`agree that electronic filing with the
`Board of a document constitutes
`electronic service.
`E. Public Availability and
`Confidentiality
`The rules aim to strike a balance
`between the public’s interest in
`maintaining a complete and
`understandable file history and the
`parties’ interest in protecting truly
`sensitive information.
`1. Public Availability: The record of a
`proceeding, including documents and
`things, shall be made available to the
`public, except as otherwise ordered.
`§ 42.14. Accordingly, a document or
`thing will be made publicly available,
`unless a party files a motion to seal that
`is then granted by the Board.
`
`po
`
`‘‘real party-in-interest’’ or ‘‘privy’’
`contexts. See Gonzalez, 27 F.3d at 759;
`see generally Wright & Miller section
`4451. Other considerations may also
`apply in the unique context of statutory
`estoppel. See generally, e.g., In re Arviv
`Reexamination Proceeding, Control No.
`95/001,526, Decision Dismissing section
`1.182 and section 1.183 Petitions, at 6
`(Apr. 18, 2011); In re Beierbach
`Reexamination Proceeding, Control No.
`95/000,407, Decision on section 1.182
`and section 1.183 Petitions, at 6 (July
`28, 2010); In re Schlecht Inter Partes
`Reexamination Proceeding, Control No.
`95/001,206, Decision Dismissing
`Petition, at 5 (June 22, 2010); In re Guan
`Inter Partes Reexamination Proceeding,
`Control No. 95/001,045, Decision
`Vacating Filing Date, at 8 (Aug. 25,
`2008).
`The Office has received requests to
`state whether particular facts will
`qualify a party as a ‘‘real party-in-
`interest’’ or ‘‘privy.’’ Some fact-
`combinations will generally justify
`applying the ‘‘real party-in-interest’’ or
`‘‘privy’’ label. For example, a party that
`funds and directs and controls an IPR or
`PGR petition or proceeding constitutes a
`‘‘real party-in-interest,’’ even if that
`party is not a ‘‘privy’’ of the petitioner.
`But whether something less than
`complete funding and control suffices to
`justify similarly treating the party
`requires consideration of the pertinent
`facts. See, e.g., Cal. Physicians, 163
`Cal.App.4th at 1523–25 (discussing the
`role of control in the ‘‘privy’’ analysis,
`and observing that ‘‘preclusion can
`apply even in the absence of such
`control’’). The Office will handle such
`questions on a case-by-case basis taking
`into consideration how courts have
`viewed the terms. Similarly, while
`y
`while
`generally a party does not become a
`
`generally a party does not become ag y p y
`
`
`‘‘real party-in-interest’’ or a ‘‘privy’’ of
`
`‘‘real party-in-interest’’ or a ‘‘privy’’ of p y p
`
`the petitioner merely through
`
`the petitioner merely through p y g
`
`
`association with another party in an
`
`association with another party in an p y
`unrelated endeavor, slight alterations in
`
`unrelated endeavor, slight alterations in g
`the facts, as well as consideration of
`the facts, as well as consideration of
`other facts, might result in a different
`other facts, might result in a different
`conclusion. So, for example, if Trade
`conclusion.
`Association X files an IPR petition,
`Party A does not become a ‘‘real party-
`in-interest’’ or a ‘‘privy’’ of the
`Association simply based on its
`membership in the Association.
`Similarly, if Party A is part of a Joint
`Defense Group with Party B in a patent
`infringement suit, and Party B files a
`PGR petition, Party A is not a ‘‘real
`party-in-interest’’ or a ‘‘privy’’ for the
`purposes of the PGR petition based
`solely on its participation in that Group.
`That is not to say that Party A’s
`membership in Trade Association X, or
`the Joint Defense Group, in those
`
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`EnvisionIT Ex. 2009, IBM v. EnvisionIT, IPR2017-01247
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