Director Review Orders Additional Discovery On Time Bar-RPI Issue

• Jurisdiction: United States,Federal
• Law Firm: Jones Day
• Subject Matter: Intellectual Property, Patent
• Author: Jesse T. Wynn, Robert Breetz and Matthew Johnson
• Published date: 17 March 2023

In Samsung Electronics Co., Ltd. v. Netlist, Inc., the PTAB determined that a time-barred third party was not a real party in interest ("RPI") and granted institution. IPR2022-00615, Paper 20 (Oct. 19, 2022) at 19 ("Institution Decision"). After institution, the patent owner moved for additional discovery pursuant to 37 C.F.R. ' 42.51(b)(2) as to whether the third party was an RPI. IPR2022-00615, Paper 40 (Feb. 3, 2023) at 2 ("Director Decision"). Director Vidal then initiated a sua sponte review of the Board's institution decision and granted-in-part the patent owner's motion for additional discovery. Director Decision at 2-3. This IPR involves U.S. Patent No. 7,619,912 directed to memory modules in computer systems that patent owner asserted in multiple district court proceedings.

Director Vidal ordered additional discovery to assist the PTAB in determining whether the petitioner improperly omitted the third party and remanded to the PTAB to determine whether the petitioner failed to meet "its burden to establish that the Petition is not time-barred under 35 U.S.C. ' 315(b)." Director Decision at 2.

Director Vidal instructed the PTAB to apply the RPI factors from Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018), which calls for analysis of the extent of the third-party's interest, whether the third party would benefit from the petitioner's actions, and whether the petitioner was representing the third-party's interests based on its relationship to the third party. Director Decision at 3. Director Vidal also ordered the PTAB to consider whether the parties were in privity, assuming that the third party was not a "real party-in-interest." Id.

PTO regulations provide that party seeking additional discovery "must show that such additional discovery is in the interests of justice." Director Decision at 3 (citing 37 C.F.R. ' 42.51(b)(2); 35 U.S.C. ' 316(a)(5)). To determine whether the discovery is in the interests of justice, the PTO applies the Garmin factors, which include "(1) more...