A recent decision by the director of the U.S. Patent and Trademark Office (USPTO) will be a boon for some companies challenging the validity of their rivals’ patents, McGuireWoods Richmond partner Amanda Wieker wrote in a Dec. 13, 2024, article in Law360.
Wieker analyzed USPTO Director Kathi Vidal’s Nov. 21, 2024, opinion in Luminex International Co. Ltd. v. Signify Holdings BV, which overruled a decision by the Patent Trial and Appeal Board (PTAB). The PTAB had barred Luminex from petitioning for inter partes review (IPR), a way to challenge a patent’s validity. Signify had sued one of Luminex’s customers for patent infringement, and the PTAB said the customer was the “real party-in-interest” that stood to gain if Signify’s patent was invalidated.
The PTAB is not bound by Vidal’s decision but will probably follow its approach, wrote Wieker, former acting vice chief administrative patent judge at the PTAB.
“Developing the record on real party-in-interest and privity issues can be burdensome and expensive,” Wieker wrote. “This decision may be a relief for potential petitioning entities in standard customer-supplier indemnification relationships, who may now hope to avoid such burden by demonstrating that their agreements are the same type of standard and arm’s-length ones Vidal considered here, lacking any exclusivity or IPR funding or control.”
The Law360 article expands on a Nov. 25, 2024, legal alert published by McGuireWoods.