74 Am. U. L. Rev. F. 29 (2024).

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Abstract

At the United States Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB), petitioners can administratively challenge that an issued patent’s claims are invalid, and if successful, have the claims canceled. While, in general, any party can file a challenge, restrictions exist, including for parties sued for infringement of those patent claims more than one year before the challenge or parties that filed previous challenges, unless the new challenge is based on grounds that were not previously available. In addition, if the petitioner’s privy or real party in interest (“RPI”) is blocked from filing a petition, then the petitioner is likewise estopped.

In instances where parties merge and one of the predecessors is estopped from filing a challenge, the PTAB has been inconsistent in deciding if the petitioner should be prevented from filing a challenge due to the predecessor being the successor’s privy or RPI. Complicating matters, the Supreme Court has held that in most instances these PTAB privy and RPI determinations are not subject to judicial review. This Comment examines how courts have decided similar issues when they arise outside the PTAB before recommending a two-step test. First, the non-estopped predecessor must have legacy operations that potentially infringe separate from the estopped predecessor’s operations, and, second, the estopped predecessor must not be a clear beneficiary of the challenge. If the successor has these separate legacy operations and the estopped predecessor is not a clear beneficiary of the challenge, then the successor should be allowed to file a challenge.

* Articles Editor, American University Law Review, Volume 74; J.D. Candidate, American University Washington College of Law, 2025; M.S., Mechanical Engineering, Catholic University of America, 2015; B.S., Mechanical Engineering, United States Naval Academy, 2004.