Recent Decisions Find Meeting of Statutory Requirement Subject to Agency Discretion

A properly filed AIA trial trial petition must name all real-parties-in-interest (RPI). The RPI requirement is recited by a number of IPR statutes, 35 U.S.C. § 312(a); and 35 U.S.C. § 315(a), (b) and (e). (The PGR statutes include corresponding provisions).

The requirement to name all RPI’s, while seemingly straightforward, has been the subject of numerous disputes at the Patent Trial & Appeal Board (PTAB). Reason being, if the RPI listing is incorrect, the filing date would need to be reset.  And since petition timing can run afoul of the 1-year time bar when the filing date is adjusted (315(b)), identifying an improper RPI listing can lead to termination of the petition.

Early on in the PTAB’s existence, this RPI requirement was a “gotcha” of sorts, especially for companies having parent entities or closely controlled affiliates.  However, whether the RPI listing was inaccurate based on simple oversight, or by design, the PTAB treated the cases alike. That is, the corrected RPI listing led to a new filing date, which in many cases doomed the petition.

More recent decisions, however, take the position that termination in this regard is discretionary.

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Recalibration of RPI/Privy Perspectives Post-WiFi

Prior to the Federal Circuit’s decision in WiFi One, real-party-in-interest/privy disputes in AIA trials were the sole province of the Patent Trial & Appeal Board (PTAB). Now that the softened appeal bar allows consideration of such disputes (especially as they relate to the one year window of 315(b)), the Court is recalibrating PTAB practices in this regard.

Earlier this month, the Court issued its decision in Applications in Internet Time, LLC v. RPX Corporation. The public version of that opinion was issued yesterday, explaining that the Board was unduly narrow in its RPI analysis. This is one of the more significant decisions on PTAB practice this year and will very likely reinvigorate RPI/privy disputes at the Board.
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