Retroactive Identification of Real Parties In Interest

What Do We know?

1. PTAB granted Petitioner’s motion to update its mandatory notices to identify an additional real party in interest (RPI), while maintaining the petition’s filing date.

2. Petitioner filed its petition within the one-year statutory period under 35 U.S.C. § 315(b) but did not identify a sister company, and litigation co-defendant, as RPI.

3. Patent Owner argued for termination under 35 U.S.C. § 312(a)(2) (petition must identify “all” RPIs), because early PTAB decisions re-set a petitioner’s filing date when updating RPIs, thereby triggering termination under the § 315(b) time bar.

4. PTAB cited the Federal Circuit’s decision in Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc) that it “is incorrect” to “conflate[] ‘real party in interest’ as used in § 312(a)(2) and § 315(b), and claim[] that ‘§ 312(a)(2) is part and parcel of the timeliness inquiry under § 315.’”

5. Because the petition was timely filed and there was no evidence of “intentional concealment, bad faith, an attempt to circumvent the estoppel rules, or any other material benefit to [Petitioner],” the motion was granted in the “interest of justice.”

Practice Tips:

This decision represents a clear break from early PTAB decisions that wrongly conflated time-bar considerations with pleading formalities. The keys here are that Petitioner filed its petition within one year from service of the patent infringement complaint and there was no evidence of time-bar avoidance “shenanigans.”

PTAB emphasized the “core functions” of identifying all RPIs: allowing judges to identify potential conflicts and ensuring proper application of collateral estoppel should a petitioner be unsuccessful in a final written decision.

PTAB’s precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, 2016 WL 2736005 at *3 (PTAB Mar. 4, 2016) (precedential), cited with approval in footnote 9 of the en banc Wi-Fi One decision, establishes procedures for rectifying non-compliance with the mandatory notice requirements, which are not jurisdictional.

PTAB cited a recent USPTO intervenor’s brief that analogized the practice of identifying additional RPIs in updated mandatory notices to the approach used in district courts pursuant to Fed. R. Civ. P. 17(a), which allows a plaintiff “a reasonable time” for correction. See Mayne Pharma Int’l Pty, Ltd. v. Merck Sharp & Dohme Corp., No. 18-1593, ECF No. 46 (Fed. Cir. Aug. 30, 2018).

This a welcomed change in direction by the PTAB, but remember, a petitioner must ask for the Board’s authorization to file a motion to update mandatory notices while maintaining the original filing date of the petition, in accordance with Lumentum.