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The Intellectual Property StrategistColumns & DepartmentsIntellectual PropertyLitigationPatent Litigation

IP News

By Howard Shire and Adam Fischer
October 01, 2018

 

Federal Circuit: IPR Petitioner Always Retains Burden of Establishing Timeliness

On September 7, the Federal Circuit made clear that an IPR petitioner always retains the burden of establishing the timeliness of its petition, and that the burden never formally shifts to the patent holder; not even to identify a real party in interest. More specifically, in Worlds Inc. v. Bungie, Inc., Nos. 2017-1481, 2017-1546 & 2017-1583 (Fed. Cir. Sept. 7, 2018), slip op. Chief Judge Prost reiterated that an IPR petitioner “bears the ultimate burden of persuasion to show that its petitions are not time-barred” because of a complaint previously served on a real party in interest. Slip. Op. at 8-9 (“the timely filing of a petition … is a condition precedent to the Director's authority to act”). The court then outlined the procedure for analyzing that issue, rejecting any formal “presumption” in favor of the petitioner, and instead mandating that the PTO Board make all “factual determinations necessary to evaluate” the issue once a sufficient question is raised by the patent holder. Id. at 15.

Worlds grew out of a dispute related to computer-generated avatars. In 2012, Worlds filed suit against Activision Publishing, Inc. (Activision) in the District of Massachusetts, alleging that Activision infringed Worlds's avatar-related patents in certain of its video games, including Call of Duty. Id. at 2. In 2014, Worlds notified Activision that it intended to add another video game series — Destiny — as an additional accused product in the litigation. See, id. at 2-3. The Destiny games were distributed by Activision, but developed by Bungie, Inc. (Bungie), which was not a party to the district court suit.

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