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Failure to Launch: Not Identifying the Proper Parties Can Prematurely End an Video Game IPR Challenge

Most video game patents that are asserted in litigation are also challenged at the PTAB through IPR or PGR petitions. Patent Owners looking for new ways attack such challenges have turned to the failure to disclose real-parties-in-interest (“RPI”). Under 35 U.S.C. § 312(a)(2), “[a] petition . . . may be considered only if . . . the petition identifies all real parties in interest[.]” Additionally, under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” These requirements can pose unique questions for video game companies based on their relationships and business process. 

For example, in World v. Bungie, the patent owner argued that petitioner Bungie failed to disclose Activision as an RPI, relying on a DevPub agreement between the two companies. The patent owner also argued that, pursuant to 35 U.S.C. § 315(b), the one-year time bar had lapsed for filing an IPR petition because Activision had been served over a year before Bungie filed its petition. In the underlying litigation, the game Destiny had been accused of infringement, and a DevPub agreement contemplated financial support from Activision to Bungie for Destiny products, as well as legal review rights. Although the PTAB found that there was no failure to disclose a real-party-in-interest, the Federal Circuit reversed and remanded in September, requiring the PTAB to conduct a further analysis regarding the potential RPI issues. The Federal Circuit also noted that the burden to demonstrate that there was no RPI issue fell upon a Petitioner once a Patent Owner had raised a particular company that arguably should have been disclosed.

The Federal Circuit also just decided that it would not review PTAB decisions denying institution based upon a failure to disclose real parties in interest. ARRIS Int’l. PLC v. Chanbond, LLC, (Fed. Cir. Dec. 27, 2018). Given the frequent overlap in studios and companies involved in developing particular games, the RPI issue requires careful attention from gaming companies.

Key Takeaways:

  • Carefully investigate what products are accused in a case.

  • Determine whether DevPub or other agreements show intertwining relationships between companies.

  • Analyze RPI issues to avoid termination of an otherwise quality PTAB challenge.

  • Watch for time bar deadlines to avoid RPI disputes.

Copyright © 2019, Sheppard Mullin Richter & Hampton LLP.

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About this Author

Harper Batts, Sheppard Mullin, Patent lawyer
Partner

Harper Batts is a partner in the Intellectual Property Practice Group in the firm's Silicon Valley office.

Areas of Practice

Harper has more than a decade of experience as an intellectual property litigator and client counselor. Numerous Fortune 50 clients have relied upon his experience to represent them in highly contentious patent litigation disputes in many different venues, including Texas, Delaware, California, New Jersey, Wisconsin, North Carolina, and the Federal Circuit. His experience includes leading several large joint defense groups in complex...

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Chris Ponder Intellectual Property Attorney
Special Counsel

Chris Ponder is a Special Counsel in the Intellectual Property Practice Group in the firm's Silicon Valley office.

Areas of Practice

Mr. Ponder's practice focuses on complex patent and business litigation that often involves competitors. His litigation experience includes conducting and managing fact and expert discovery, and developing claims and defenses. Mr. Ponder has extensive experience in motion advocacy, and routinely argues motions in federal court. He has taken depositions of high-level corporate executives (including a chief operating officer, a chief technology officer, and a general counsel), as well as expert witnesses. He has worked on several inter partes review proceedings related to active district court litigation. 

Mr. Ponder has taken part in jury trials involving patent infringement and other commercial claims. Intellectual property counseling matters have included assisting clients with negotiating and evaluating patent licenses, and evaluating software license agreements, and responding to trademark and copyright infringement issues.

Experience

  • Represented leading game developer in an inter partes review proceeding where the PTAB found all challenged claims unpatentable following an unsuccessful IPR challenge by a different game developer

  • Represented leading wearable device company in an inter partes review proceeding where the Patent Owner (a Wi-LAN subsidiary) disclaimed the challenged claims after institution

  • GENBAND US LLC v. Metaswitch Networks Ltd. (E.D. Tex.) – Represented GENBAND in competitor litigation involving trade secret misappropriation and unfair competition counterclaims

  • Elbit Systems Land and C4I Ltd. v. Hughes Network Systems, LLC (E.D. Tex.) –Represented defendants against claims of patent infringement involving satellite communications technologies brought by a major military contractor

  • GENBAND US LLC v. Metaswitch Networks Ltd. (E.D. Tex.) – Represented GENBAND in patent infringement countersuit brought by a competitor involving telecommunications technologies

  • GENBAND US LLC v. Metaswitch Networks Ltd. (E.D.Tex) – Represented GENBAND in patent infringement action against a competitor involving VoIP, media gateway, and session border controller technologies

Education

  • J.D., University of Houston, 2008, magna cum laude Articles Editor, Houston Law Review, Order of the Coif
  • B.S., Computer Science, University of Houston, 2004, cum laude,
  • Member of the Honors College

Clerkships

  • Law Clerk to the Honorable Roy S. Payne of the United States District Court for the Eastern District of Texas.

Admissions

  • California
  • Texas
  • United States Patent and Trademark Office
  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the Northern District of California
  • United States District Courts for the Southern and Eastern Districts of Texas
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