The PTAB added three new precedential decisions following an older precedential decision directed to acceptable circumstance for a petitioner to change the real party in interest during trial - even after a bar date has passed. The original decision was Lumentum, and the three new decisions are Ventex, Proppant, and Adello.
The important take away is that unless there are bad acts (e.g., known facts at the time of filing leading a reasonable person to believe the RPI was wrong) a petitioner can change the real party in interest during trial. The Board considered factors such as (1) avoiding 315(b) bar or estoppel rules; (2) prejudice to patent owner as a result of the delay; (3) bad faith; and (4) gamesmanship.
These four decisions do not necessarily go into the underlying RPI determination itself, just the ability to change RPI during trial. An informative decision on the RPI determination itself Magna, discusses the basic agency principles required to show whether an RPI is correct or incorrect – funding, directing, and controlling.
This article appeared in the April 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.