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.