IPO's IP Chat Channel: Privity at the PTAB Since RPX

Dorothy Whelan, a Principal and Post-Grant Practice Co-Chair in Fish's Twin Cities office, will be a panelist on IPO's IP Chat Channel: Privity at the PTAB Since RPX, Thursday, November 29.

This timely program will analyze the case law, and the resulting changes in PTAB practice, since the Federal Circuit's July decision in Applications in Internet Time (AIT) v. RPX. That appeal from a PTAB inter partes review decision found that the PTAB took an "impermissibly shallow" look at evidence presented by the patent owner about the relationship between the petitioner and another party.

Subsequent related decisions have included two significant Federal Circuit opinions — Worlds Inc. v. Bungie, Inc. and Western Geco v. ION — as well as numerous relevant decisions by the PTAB, such as the denial of a petition in Arris v. ChanBond and Sirius XM Radio, Inc. v. Fraunhofer­Gesellschaft, and the granting of additional discovery in Kashiv v. Purdue.

The panel includes a former PTAB Administrative Patent Judge who recently returned to private practice and two highly experienced PTAB litigators. They will discuss:

  • The eventual boundaries of the "clear beneficiary" test for determining real-parties-in-interest, including whether joint defense groups will be impacted
  • The PTAB's new approach to granting discovery before institution, and how this offers patent owners a not-to-be-missed opportunity
  • The PTAB's recent flexibility in sometimes allowing a petitioner to choose between naming additional RPIs to win institution or risking non-institution by contesting the need to do so.


Dorothy Whelan, Principal, Post-Grant Practice Co-Chair, Fish & Richardson
Gasper LaRosa, PTAB Litigation Practice Co-Chair, Jones Day
Brian Murphy, Partner, Haug Partners