{"id":2212,"date":"2018-09-07T11:31:49","date_gmt":"2018-09-07T15:31:49","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2212"},"modified":"2018-09-17T00:30:50","modified_gmt":"2018-09-17T04:30:50","slug":"petitioner-bears-the-ultimate-burden-of-persuasion-with-respect-to-real-party-in-interest","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2212","title":{"rendered":"Petitioner Bears the Ultimate Burden of Persuasion With Respect to Real Party in Interest"},"content":{"rendered":"

In Worlds Inc. v. Bungie, Inc.<\/a>, [2017-1481, 2017-1546, 2017-1583](September 7, 2018), the Federal Circuit vacated the Final Written Decision in three inter partes reviews because the Board erred in its real party in interest analysis, and remanded.\u00a0\u00a0The appeal involved three related patents:\u00a0U.S. Patent Nos. 7,945,856,\u00a08,082,501, and 8,145,998, relating to\u00a0the computer-generated display\u00a0of avatars in a virtual world, including methods and\u00a0systems to determine which particular avatars are displayed
\nin a given situation.<\/p>\n

Worlds sued Activision on the patents, and while the suit was pending indicated that it was going to add products developed by Bungie, but distributed by Activision to the suit.\u00a0 Bungie filed the three petitions for IPR challenging Worlds’ patents more than a year after Activition was served with the Complaint, and Bungie did not name Activision as a real party in interest.<\/p>\n

The Federal Circuit pointedly observed that\u00a0absent from the Board\u2019s analysis of the real-party-in-interest\u00a0issue is any clear statement of what, if any,\u00a0burden framework the Board used to analyze the evidence\u00a0presented in these IPRs, including an identification of\u00a0which party the Board viewed as bearing the burden of\u00a0persuasion.\u00a0 \u00a0The Federal Circuit largely agreed with the burden framework used in\u00a0Atlanta Gas Light<\/em>. The Federal Circuit said that the\u00a0IPR petitioner bears the burden of persuasion to demonstrate
\nthat its petitions are not time-barred under\u00a0\u00a7 315(b) based on a complaint served on a real party in\u00a0interest more than a year earlier, and the\u00a0petitioner\u2019s initial identification of the real parties in\u00a0interest should be accepted unless and until disputed by a\u00a0patent owner.\u00a0 The patent owner must produce some\u00a0evidence to support its argument that a particular third\u00a0party should be named a real party in interest. The Federal Circuit rejected the Board’s\u00a0practice of creating\u00a0a \u201cpresumption\u201d that the petitioner\u2019s initial
\nidentification of the real parties in interest is correct.\u00a0 While the patent owner\u00a0must produce some evidence\u00a0that tends to show that a particular third party should be\u00a0named a real party in interest.\u00a0 A mere assertion that a\u00a0third party is an unnamed real party in interest, without\u00a0any support for that assertion, is insufficient to put the\u00a0issue into dispute.<\/p>\n

The Federal Circuit then turned to the question of who should bear the burden of persuasion, noting a\u00a0complete absence of any statement as to which party\u00a0should bear the burden of persuasion.\u00a0 The Federal Circuit\u00a0could not discern whether\u00a0the Board placed the burden on Worlds, the patent owner,\u00a0to persuade the Board that Bungie failed to list a real\u00a0party in interest that would render the petitions time barred\u00a0under \u00a7 315(b), which would\u00a0have been improper.\u00a0 Moreover, the Federal Circuit was concerned that the Board\u00a0may have relied on attorney argument as evidence that\u00a0Activision was not controlling or funding these IPRs.<\/p>\n

In light of these concerns, the Federal Circuit found it appropriate to\u00a0remand the case to the Board for further consideration of\u00a0the real-party-in-interest issue.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Worlds Inc. v. Bungie, Inc., [2017-1481, 2017-1546, 2017-1583](September 7, 2018), the Federal Circuit vacated the Final Written Decision in three inter partes reviews because the Board erred in its real party in interest analysis, and remanded.\u00a0\u00a0The appeal involved three … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[21],"tags":[],"class_list":["post-2212","post","type-post","status-publish","format-standard","hentry","category-ipr"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2212","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2212"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2212\/revisions"}],"predecessor-version":[{"id":2213,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2212\/revisions\/2213"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2212"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2212"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2212"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}