Tuesday, December 13, 2016

Petitioner’s Failure to Identify Real Party-In-Interest Warrants Sanction of Attorney Fees and Costs​

The Board granted the patent owner's motion for sanctions. "In the related IPR, the Board specifically found that AGLR is a real party in interest, and it follows that the merged entity is also a real party in interest. . . . Petitioner’s failure to file timely the updated mandatory notice is especially significant in light of the central nature that the issue of AGLR's status as a real party in interest played in the related IPR. . . . With respect to [the parent company of the petitioner], we do not credit Petitioner’s argument that [the parent company] is not a real party in interest in light of Petitioner’s explicit notification to the contrary. Petitioner cannot have it both ways, identifying [the parent company] as a real party in interest to ensure compliance with 35 U.S.C. § 312(b), while simultaneously maintaining that it is not a real party in interest to evade the obligations of 37 C.F.R. § 42.8(a)(3). In light of these various considerations, we conclude that Petitioner has performed conduct that warrants a sanction. . . . We determine that an appropriate sanction, proportionate to the harm suffered by Patent Owner, is to award costs and fees incurred in association with this proceeding from the time after issuance of the Final Written Decision until the date of this Decision."

Petition for Inter Partes Review by Atlanta Gas Light Company, IPR2015-00826 (PTAB December 6, 2016, Order) (Boucher, APJ)

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