Author: Linda J. Thayer
Editor: Maureen D. Queler
As of December 31, 2015, the PTAB had reached a final disposition on 2,749 petitions for inter partes review (IPR), post-grant review of a covered business method (CBM), or post-grant review (PGR). Of that number, roughly half (1342) resulted in institution, of which 817 resulted in a final written decision. This two-part series will provide a summary of what were the most important, or at least most interesting, decisions of 2015.
1.) Zerto, Inc. v. EMC Corp., Case IPR2014-01254, Paper 32 (Feb. 12, 2015)
This decision is important for its explanation of the factors that support finding that an entity is a real-party-in-interest that must be named in a petition. In this case, the PTAB denied institution of an IPR filed by Zerto, Inc. because it believed that a real party-in-interest (Zerto Ltd.) was omitted. The PTAB cited the existence of a parent-wholly-owned-subsidiary relationship between the two entities, an overlap in the Board of Directors, a lack of distinction between the two on a website, and commingled financial reports as relevant factors. Other factors have been identified in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper 88 and Galderma S.A. v. Allergan Industrie, SAS, IPR2014-01422, Paper 14.