Patent, Trial and Appeal Board ruling for patent owner Arigna Technology involves hotly debated issue in IPR review
HOUSTON – Heim, Payne & Chorush lawyers have prevailed at the U.S. Patent Trial and Appeal Board (PTAB) against an attempt by Volkswagen Group of America to invalidate patented technology owned by Arigna Technology Limited. It was a rare victory for a patent owner in a challenge that focused on the PTAB’s evolving definition of what constitutes a “real party in interest” in an inter partes review (IPR) petition.
In a Jan. 21 decision, PTAB judges agreed with Heim, Payne & Chorush lawyers that Volkswagen should have included Conti Temic Microelectronic GmbH – which supplies radar sensor modules at the heart of the infringement claim – as a “real party in interest” in its IPR petition. Based on that, the petition was rejected because Conti had previously challenged the patent’s validity in federal court. The ruling hinged on arguments that Volkswagen had filed an IPR that Conti itself could not file, which would have allowed Conti and Volkswagen to jointly mount parallel attacks on Arigna’s patent in two different forums.
The dispute stems from patent infringement litigation against Volkswagen filed last year by Arigna in the U.S. District Court for the Eastern District of Texas. Conti was added as a defendant in the litigation after Conti sought a declaratory judgment regarding the validity of Conti’s patents in a Virginia federal court. The PTAB’s decision means that any questions about the validity of Arigna’s patent will be decided in federal court and not through an IPR proceeding.
Arigna was represented before the PTAB by Heim, Payne & Chorush partner Mike Heim and associate Chris Limbacher. The case is Volkswagen Group of America Inc. v. Arigna Technology Limited, IPR2021-01263.
The definition of a real party in interest in IPR disputes has become a hotly debated issue in patent litigation as defendants in patent infringement disputes increasingly seek ways to challenge a patent’s validity simultaneously before the patent board and in civil courts. In May 2020, the U.S. Supreme Court ruled that IPR decisions cannot be appealed to U.S. courts.
“It’s been extremely difficult for any patent owner to prevail,” said Mr. Heim. “The U.S. Patent and Trademark Office has been reluctant to deny petitions for failure to identify a real party in interest.”
Heim, Payne & Chorush, LLP, represents plaintiffs and defendants in litigation across a broad range of technologies and business sectors. Firm attorneys handle all facets of intellectual property litigation for some of the largest energy and technology firms, as well as individuals and smaller companies. Ranked among the very best firms in Texas for patent litigation by Chambers USA and among the most active and top-performing firms in matters before the U.S. Patent Trial and Appeal Board by Patexia Insights, Heim, Payne & Chorush takes pride in its ability to partner with other attorneys and firms to bring the best possible trial team together for the benefit of the client. To learn more about the firm and the work it does, visit http://www.hpcllp.com.