USPTO de-designates two decisions involving real party in interest

Patent Trial and Appeal Board

USPTO de-designates two decisions involving real party in interest

Today, the United States Patent and Trademark Office (USPTO) de-designated Proppant Express Investments, LLC v. Oren Technologies, LLC and Adello Biologics LLC v. Amgen Inc. from precedential status. In both decisions, the Patent Trial and Appeal Board (PTAB) held that a petitioner may amend its identification of real parties in interest (RPIs) while maintaining the petition’s original filing date after considering: (1) whether the petitioner has attempted to circumvent the time bar or estoppel rules; (2) petitioner bad faith; (3) prejudice to a patent owner from the delay; and (4) petitioner gamesmanship. Proppant Express Invests., LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86 (PTAB Feb. 13, 2019); Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11 (PTAB Feb. 14, 2019).

These decisions are de-designated and no longer binding on the PTAB because they conflict with the decision in Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) (precedential) (“Corning Optical”), which holds that a petitioner’s amended identification of RPIs requires according the petition a new filing date. Corning Optical, IPR2014-00440, Paper 68 at 23.

Learn more about precedential and informative decisions.

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