Topic: Real parties in interest / privity

Arris Group, Inc. v. C-Cation Technologies, LLC, Case IPR2015-00635 (May 1, 2015) (Paper 10)

Takeaway (1):
Res judicata does not apply to bar a patent owner from reasserting an issue/”defense” (e.g., § 315(b) one-year time bar) that the patent owner previously asserted unsuccessfully in the context of prior IPR proceedings involving the same petitioner and patent where the claims challenged in the IPR petition at issue were not part of the prior IPR proceedings and the petition at issue is based on different grounds (because the subsequent IPR would not satisfy the third prong of the res judicata test – “the second claim is based on the same set of transactional facts as the first.”)
Takeaway (2):
The Board might grant discovery of relevant indemnification agreements in connection with a patent owner’s argument that a petition is barred under § 315(b) due to privity.

TRW Automotive US LLC v. Magna Electronics, Inc., Case No. IPR2014-00293 (June 27, 2014) (Paper 18)

Takeaway(1): For patents added to a pending patent litigation through a motion to amend the complaint, the clock for the 35 U.S.C. § 315(b) one-year time bar starts when the motion is granted (not when the motion is first served).

Takeaway (2): A Patent Owner challenging a petition for failing to identify all real-parties-in-interest must provide a factual basis to support its allegation.