The Menard-Signify Legal Battle: How the RPI Could Upend the IPR
The ongoing legal conflict between Menard and Signify revolves around U.S. Patent No. 10,299,336 and its broader implications. The case could set important precedents for patent litigation, particularly because the real party in interest (RPI) could upend the inter partes reviews (IPRs) and stays in litigation.
Litigation Stay, Patent Validity, and the RPI Debate
Menard’s strategy depends on maintaining a stay in the litigation while the IPR of the 336 patent proceeds. If the stay is lifted or the patent upheld, Menard faces significant financial liabilities, including damages for past and future patent use.
A key issue in this case is whether Menard qualifies as an RPI in the IPR filed by Luminex. A real party in interest is defined as an entity that controls, funds, or has a vested interest in a case before the Patent Trial and Appeal Board (PTAB). If Menard is deemed an RPI, the IPR would be time-barred because it was filed beyond the statutory one-year deadline. This would invalidate the IPR and likely lift the litigation stay, exposing Menard to legal and financial risks.
Conflicting Views on RPI Status
The PTAB initially concluded that Menard was an RPI, citing evidence of its vested interest in the IPR. However, USPTO Director Kathi Vidal overturned this decision, stating that Menard’s involvement did not meet the threshold for control, funding, or influence required to qualify as an RPI. This discrepancy has become a focal point of the legal battle.
Signify disputes Director Vidal’s decision and argues that it overlooked critical evidence, undermining the intent of RPI rules. Menard, however, is defending Vidal’s findings and asserts that Luminex acted independently when filing the IPR. Menard claims no direct involvement or influence in the process.
Key Filings and Developments
Recent filings highlight the case’s complexity and stakes:
- 30 OCT 2024: Menard filed a reply opposing Signify’s motion for additional discovery. Menard argued that Signify’s claims regarding RPI status lack merit and reaffirmed that Luminex acted independently. Petitioner reply.
- 5 DEC 2024: Dr. Gary Eden will give a deposition, providing critical technical insights for the PTAB’s validity assessment of the 336 patent. Eden Disposition
- 22 NOV 2024: Director Vidal issued a detailed opinion rejecting Signify’s RPI challenge. Signify is now challenging this decision. Vidal’s upcoming departure from the USPTO raises speculation about whether her replacement might revisit the RPI determination. Petitioner reply, Eden Disposition.
RPI Status Could Upend IPR
If Menard is ruled an RPI, the IPR will be dismissed as untimely. This dismissal would expose Menard to immediate litigation, removing its ability to rely on a stay for delaying proceedings. Without the IPR, Menard faces heightened legal and financial risks.
Signify, on the other hand, sees this case as a broader fight involving multiple patents. Currently, five additional patents are at issue in the litigation, with more potentially added later. Signify’s strategy seeks to prevent defendants from using an IPR on a single patent to stall litigation involving numerous others. This ensures a more efficient resolution and aligns with its goal of requiring Menard to become a licensee, as others in the industry have already done.
Director Vidal’s Departure and Future Developments
Director Vidal’s decision to leave the USPTO adds another layer of uncertainty. A new Director may give Signify the opportunity to request a review of the RPI issue. Such a move could shift the case’s trajectory and lead to the lifting of the litigation stay.
Broader Strategic Implications
Even if Menard succeeds in this particular instance, it faces broader challenges. Five additional patents remain in the litigation, and Signify could introduce more. Over time, Menard is likely to face the same outcome as others in the industry: becoming a licensee of Signify. However, Menard continues to delay this outcome as long as possible.
This case raises critical questions about the use of IPRs in multi-patent litigation and the role of RPI determinations in ensuring fair and timely resolutions. The scheduled deposition of Dr. Eden on December 5 and the upcoming leadership transition at the USPTO are key developments to watch.
Conclusion
The Menard-Signify legal battle highlights the complexities and stakes of patent litigation. It underscores the importance of RPI determinations, strategic use of IPRs, and the dynamics of patent enforcement. As the case unfolds, it will likely shape industry practices and influence future patent disputes.
Go Deeper: Signify vs. Luminex: Is Menard Indemnified?