WesternGeco LLC v. ION Geophysical Corporation

35 U.S.C. §315(b) bars the Patent Office from instituting inter partes review proceedings to challenge a patent's validity "if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent." (emphasis added). Here, ION worked closely for years with another company, PGS, as its "launch partner," to develop a product found to willfully infringe WesternGeco's patents. ION and PGS shared an indemnity relationship, with ION making a "product assurance pledge" regarding the accused product and the asserted patents. After ION lost at trial and was concededly time-barred from pursuing IPRs, PGS filed petitions (which ION later joined), resulting in the invalidation of many of WesternGeco's patents. The Patent Office not only denied WesternGeco discovery into details of the PGS-ION relationship, it prohibited WesternGeco from even filing a motion for such discovery because WesternGeco did not already have evidence that ION "controlled" these IPRs. The Federal Circuit applied a "control" test in affirming. The questions presented are: Whether the court of appeals and agency erred by holding that "real party in interest, or privy of the petitioner" refers only to others who "control" the petitioner's litigation before the agency. Whether the Patent Office. may deny discovery—or even leave to file a discovery motion— designed to meaningfully test whether that statutory prohibition applies, and then invalidate a patent.