Thirty-five Companies Must "Stand in the Shoes" of a Single Petitioner: PTAB | Practical Law

Thirty-five Companies Must "Stand in the Shoes" of a Single Petitioner: PTAB | Practical Law

In Agilysys, Inc. v. Ameranth, Inc., the Patent Trial and Appeal Board (PTAB) ruled that 35 companies identified as "petitioners" and real parties-in-interest in a covered business method (CBM) post-grant review must act as a "single Petitioner" in the proceedings.

Thirty-five Companies Must "Stand in the Shoes" of a Single Petitioner: PTAB

Practical Law Legal Update 6-557-5725 (Approx. 3 pages)

Thirty-five Companies Must "Stand in the Shoes" of a Single Petitioner: PTAB

by Practical Law Intellectual Property & Technology
Published on 13 Feb 2014 • USA (National/Federal)
In Agilysys, Inc. v. Ameranth, Inc., the Patent Trial and Appeal Board (PTAB) ruled that 35 companies identified as "petitioners" and real parties-in-interest in a covered business method (CBM) post-grant review must act as a "single Petitioner" in the proceedings.
On February 11, 2014, the Patent Trial and Review Board issued an order in Agilysys, Inc. v. Ameranth, Inc. ruling that multiple parties identified in a petition constitute a single "Petitioner" in a post-grant patent challenge (Case CBM2014-00014 (PTAB Feb. 11, 2014)).
The petition at issue seeks covered business method (CBM) post-grant review of a patent directed to data processing systems and operations used in hospitality industries. The petition identifies:
  • 35 companies as "petitioners" and real parties-in-interest.
  • 15 pairs of lead and back-up counsel.
On February 7, 2014, the Patent Trial and Appeal Board (PTAB) held a conference call with the parties to discuss how to proceed in view of the number of companies and counsel identified in the petition. One of the companies' counsel proposed that:
  • The trial would proceed with the 35 companies split into 15 groups.
  • The 35 companies would share the allotted pages for paper filings and include separate sections to explain any differences in their positions.
  • One attorney would speak on behalf of all 35 companies during PTAB conference calls, but that other companies' counsel could also speak to raise any difference in position.
The PTAB rejected counsel's proposal based on:
  • The plain language of 37 C.F.R. § 42.2, which defines "Petitioner" to mean "the party filing a petition requesting that a trial be instituted."
  • The risk of prejudice to the patent owner from potentially having to respond to 35 different positions.
  • The inefficiency of conducting a trial with multiple "petitioners" advocating potentially conflicting positions.
The PTAB ruled that the companies must therefore act as a single party before PTAB and speak with a "uniform voice" in filings and during conference calls. Accordingly, the PTAB ordered that:
  • The Petitioner must re-designate lead and back-up counsel under 37 C.F.R. § 42.10(a), regarding itself as a "single party."
  • The Petitioner may not divide paper filings into separate parts articulating different positions among the 35 companies.
  • Any counsel making an oral representation on the Petitioner's side at any hearing, conference call or deposition is presumed to speak on behalf of all 35 companies and should not make any representation unless that is the case.
The decision emphasizes the need for companies and their counsel to cooperate and formulate a unified approach when challenging a patent with other companies in a single petition, which may present challenges when many companies are involved. The decision also emphasizes the PTAB's strict adherence to its trial practice and procedure rules and interest in conducting PTAB trials quickly and efficiently.