Shearman & Sterling LLP | IP Blog | Patent Trial And Appeal Board Denies Discovery On Real-Party-In-Interest Issue<br >  
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  • Patent Trial And Appeal Board Denies Discovery On Real-Party-In-Interest Issue
     
    02/06/2018
    On February 2, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office denied a patent owner’s motion for discovery concerning a petitioner’s identification of the real party in interest in an inter partes review (IPR).  Artesian Home Prods. v. Gutterglove, Inc., No. IPR2018-00015. 

    IPR petitioners are required to identify all of the real parties in interest to an IPR request; for example, one company cannot pay another to file an IPR, or contribute to the cost of the IPR, without itself being identified in the filing.  Patent owner Gutterglove believed that petitioners Artesian Home Products and American Die & Rollforming had not identified all of the real parties in interest in these IPRs.  Gutterglove told the PTAB that this belief was based on the fact that public documents show additional entities at the same address, in the same business, with the same officers, and using the same trademark as the petitioners, and sought discovery to determine whether its belief was correct.

    The PTAB denied the request for discovery.  The PTAB held that in order to receive discovery on the real-party-in-interest issue, a patent owner must be “already in possession of a threshold amount of evidence tending to show beyond speculation that something useful will be discovered in determining whether the entities are unidentified real parties-in-interest, i.e., whether any of the entities fund, direct, or control these proceedings.”  The PTAB found that in this case, the public records to which Gutterglove pointed did not amount to such a threshold amount of evidence.

    This is another in a chain of PTAB decisions illustrating the difficulties that can arise in challenging a petitioner’s identification of real parties in interest.  A patent owner must already have evidence of misidentification in order to take discovery on the misidentification issue.  As a result, the PTAB rarely orders such discovery.  Only in an unusual case, as when a petitioner leaves computer metadata in its request that indicates that a third party participated in preparation of the petition (see IPR2014-00171, exhibit no. 1075), will the PTAB permit discovery on this issue.

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