Takeaway: The statutory provision that sets forth the requirement to identify all real parties-in-interest in an IPR petition, 35 U.S.C. §312(a)(2), is not jurisdictional in nature. Failing to comply with this requirement thus does not deprive the Board of jurisdiction to hear a case.
Topic: Real parties in interest / privity
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.”)
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.
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.