Failure to Name Real Party in Interest Dooms Petition

In Paramount Home Entertainment Inc. v. Nissim Corp., IPR2014-00961, Paper 11 IPR2014-00962, Paper 11 (December 29, 2014), the Board denied institution of inter partes review of claims 1–27 of U.S. Patent No. 7,054,547 for failure to name the real party in interest.  Paramount failed to name its parent corporation, Paramount Pictures Corporation violated 35 U.S.C. § 312(a)(2).  Paramount Pictures Corporation was not a real party in interest merely because of the parent-subsidiary relationship, but because “Patent Owner presents substantial evidence showing that Paramount Pictures Corporation exercised control over the dispute involving the . . .patent.”.  Compare Compass Bank v. Intellectual Ventures II LLC, IPR2014-00724, Paper 12 at 10–11 (November 6, 2014).

Apparently Paramount Pictures Corporation, which was already in litigation with the patent owner, was estopped from bringing a petition, so its omission as a real party in interest may have been strategic, rather than inadvertent.  However this is a good reminder to be careful in identifying the real party in interest, and follow the guidelines in the Office Patent Trial Practice Guide 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Relevant factors include:

  • whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.
  • whether the non-party funds or directs and controls a proceeding.
  • the non-party’s relationship with the petitioner;
  • the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing;
  • the nature of the entity filing the petition.

Whether a party who is not a named participant in a given proceeding is a “real party-in-interest” to that proceeding is a highly fact dependent question.

 

 

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About Bryan Wheelock

Education
J.D., Washington University in St. Louis
B.S.E. in Mechanical Engineering, Duke University

Bryan Wheelock’s practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods.

Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies.

In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.