(a) Each notice listed in paragraph (b) of this section must be filed with the Board:
(1) By the petitioner, as part of the petition;
(2) By the patent owner, or applicant in the case of derivation, within 21 days of service of the petition; or
(3) By either party, within 21 days of a change of the information listed in paragraph (b) of this section stated in an earlier paper.
(b) Each of the following notices must be filed:
(1) Real party-in-interest. Identify each real party-in-interest for the party.
(2) Related matters. Identify any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding.
(3) Lead and back-up counsel. If the party is represented by counsel, then counsel must be identified.
(4) Service information. Identify (if applicable):
(i) An electronic mail address;
(ii) A postal mailing address;
(iii) A hand-delivery address, if different than the postal mailing address;
(iv) A telephone number; and
(v) A facsimile number.
Notes of Decisions
Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018).
· cites it 2× “4, 2016) (precedential); 37 C.F.R. §§ 42.8 (a)(3), 42.8(b)(1). In contrast, if a petition is not filed within a year after a real party in interest, or privy of the petitioner is served with a complaint, it is time-barred by § 315(b), and the petition cannot be rectified and in…”
Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306 (Fed. Cir. 2019).
“§ 312 (a)(2), and is under a continuing obligation to update the Board within 21 days of any change to the RPI, 37 C.F.R. § 42.8 (a)(3), (b)(1). This continuing obligation to provide notice would seem to make little sense unless it was relevant to the ongoing proceedings.”
Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018).
“§ 312 (a), 37 C.F.R. § 42.8 (b)(1), and § 315(b). It acknowledged that both the '482 and '111 patents had been asserted against Salesforce, RPX's client, in district court, but concluded that AIT "ha[d] not provided persuasive evidence to support" its assertion that "RPX must…”
Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311 (Fed. Cir. 2018).
· cites it 2× “§ 312 (a)(2), and Board regulations require petitioners to update that information within 21 days of any change, see 37 C.F.R. § 42.8 (a)(3). Late in the IPR, but before the Board's final written decision, *1314 Atlanta Gas's parent company, AGL Resources Inc.”
Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018).
“§ 312 (a)(2) (requiring a petition to "identif[y] all real parties in interest"); 37 C.F.R. § 42.8 (b)(1) (requiring a party to "[i]dentify each real party-in-interest for the party"); see also id.”
Medtronic, Inc. v. Lee, 151 F. Supp. 3d 665 (E.D. Va. 2016).
“312(a)(2) and 37 C.F.R. § 42.8 (b)(1); 35 U:S.C. § 322(a)(2); both procedures specifically state that the PTAB’s decision of whether to institute the requested review *671 proceedings is final and nonappealable, §§ 314(d) and 324(e); and finally, both procedures provide for…”
Dolby Labs. Licensing Corp. v. Unified Patents, LLC, 138 F.4th 1363 (Fed. Cir. 2025).
“In its petition, Unified certified it was the sole real party in interest (RPI) under 37 C.F.R. § 42.8 (b)(1). J.A. 81. Dolby identified nine other entities it believed should also have been named as RPIs (Alleged RPIs).”
Global Equity Mgmt. (Sa) v. Ebay Inc. (Fed. Cir. 2020).
· cites it 2× “§ 315 (a)(1) (2012) and 37 C.F.R. § 42.8 (b)(1) (2018). J.A. 2357–75 (Motion to Terminate IPR2016– 01828), 6662–80 (Motion to Terminate IPR2016-01829).”
Illinois Tool Works Inc. v. Termax LLC (N.D. Ill. 2023).
“Similarly unavailing is Termax’s assertion that ITW failed to comply with 37 C.F.R. 42.8(b)(2), which requires disclosure to the PTAB of “any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding.”
— 37 C.F.R. § 42.8(b)(2) — 1 case
Illinois Tool Works Inc. v. Termax LLC (N.D. Ill. 2023).
“Similarly unavailing is Termax’s assertion that ITW failed to comply with 37 C.F.R. 42.8(b)(2), which requires disclosure to the PTAB of “any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding.”
Annotations are extracted automatically from the opinions in the
Syfert caselaw corpus and ranked by authority, recency, and
treatment. Dots show Syfertize treatment of the citing case itself.