Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
In a final written decision of an inter partes review (IPR) determining that the petitioner showed by a preponderance of the evidence that challenged claims were unpatentable, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) canceled all claims under review, rejecting the patent owner’s argument that petitioner failed to identify a real party-in-interest because the patent owner did not show that the alleged real party-in-interest did not exercise control over the litigation. Sipnet EU S.R.O. v. Straight Path IP Group, Inc., Case No. IPR2013-00246 (PTAB, Oct. 9, 2014) (Deshpande, APJ).
The PTAB found claims of the challenged patent invalid, rejecting arguments raised by the patent owner that one of the prior art references was not prior art because it was not publicly available. The PTAB relied on two declarations submitted by the petitioner. The first declarant testified that he saw several Windows NT 3.5 Server packages that included a print copy of the prior art at a time prior to the effective date of the challenged patent. He also testified that the Windows NT 3.5 Server package included a CD version of the reference. The second declarant testified that the print and CD versions of the reference were substantially similar, with the only differences relating to the glossary and formatting. The patent owner had raised similar arguments in a motion to strike, but those arguments were also rejected by the PTAB.
The patent owner also argued that the petitioner was estopped from initiating the proceeding for failure to identify Stalker Software as a real party-in-interest. The petitioner is a reseller of Stalker’s software package that purportedly infringes the patent at issue. The patent owner argued that its predecessor in interest served a complaint on Stalker involving the same patent more than one year before the filing of the IPR. However, the PTAB concluded that the patent owner had failed to demonstrate that Stalker exercised control over the litigation or that Stalker was responsible for funding and directing the proceeding. In other words, the PTAB found that the patent owner failed to prove that Stalker was a real party-in-interest. Rather, the PTAB found that Stalker had only provided the reference used in the IPR to the petitioner, and this action was performed at the request of the petitioner. Accordingly, Stalker was not a real party-in-interest.