November 15, 2013

To Be a Real Party-In-Interest, One Must Control Actions of a Party to an Inter Partes Review

Meeting success on almost every asserted ground, Syntroleum was able to get 20 challenged claims of a Neste Oil patent into a trial for inter partes review in a case styled as Syntroleum Corp. v. Neste Oil Oyj (IPR2013-00178), involving U.S. Pat. No. 8,212,094.

The ‘094 patent relates to a “process for the manufacture of diesel range hydrocarbons from bio oils and fats, commonly called ‘biodiesel’.” More specifically, the ‘094 patent discloses a two-step process in which a biological feed stream, diluted with a hydrocarbon, is 1) hydrodeoxygenated; and then 2) isomerized.

The Board first addressed an argument by Patent Owner that the Petition failed to name all real parties-in-interest. Patent Owner alleged that two other corporations, who were named as co-defendants in concurrent litigation brought by Patent Owner, were real parties-in-interest but were not named. The Board rejected this argument, despite the fact that two of those corporations formed the third as a joint venture, shared counsel, and an indemnification agreement among the parties existed. None of these facts, per the Board, prove that any party is able to control the actions of another. Order at 6 (“Whether a party that is not named in an inter partes review proceeding is a ‘real party-in-interest’ or ‘privy’ is a ‘highly fact-dependent question,’ taking into account various factors such as whether the non-party ‘exercised or could have exercised control over a party’s participation in a proceeding’ and the degree to which a non-party funds, directs, and controls the proceeding.”), citing, Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48759-60.

Then, the Board moved to a fairly detailed claim construction analysis, that centered largely on Patent Owner’s attempts to limit various terms in the claim to “commercial-scale” production processes. Patent Owner sought to introduce this limitation to the claims via the construction of the preamble and the use of a dictionary definition. The Board declined to incorporate this “commercial-scale” limitation into the claims, however, using the breadth of the dictionary definition cited by Patent Owner against it. Order at 10. More specifically, while the dictionary definition had some verbiage that supported Patent Owner’s position, other portions of that definition suggested that Patent Owner’s definition was too narrow.

The remainder of the Board’s decision included straightforward analysis of the anticipation and obviousness of the challenged claims that underlie the Board’s decision to institute trial.