By Carl Kukkonen and Matt Johnson –
The Patent Trial and Appeal Board (PTAB) has designated as precedential a decision that squarely reaffirms the statutory requirement to identify all real parties in interest (RPI) in AIA petitions. By elevating Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014‑00440, Paper 68 (PTAB Aug. 18, 2015) (except for § II.E.1), the Office has returned to the pre‑SharkNinja framework that requires petitioners to properly disclose real party in interest (RPI) before institution. This shift is more than procedural housekeeping: according to Director Squires, it reflects broader policy and national‑security concerns associated with opaque petitioning.
The AIA speaks directly to RPI identification. Under 35 U.S.C. § 312(a)(2) (and its PGR counterpart, § 322(a)(2)), a petition “may be considered only if … the petition identifies all real parties in interest.” Prior to SharkNinja, PTAB panels consistently treated this language as a threshold condition to institution. Corning Optical collects those authorities and applies them: when a patent owner raises a supported challenge to RPI disclosure, petitioners must demonstrate compliance; failure to do so renders the petition incomplete and subject to termination or re‑filing with a new filing date.
With the precedential designation, the Office has confirmed that § 312(a)(2) is not aspirational. It is a gateway requirement. Satisfying it demands transparency into who funds, directs, and can control the AIA proceeding.
Corning Optical, where a case was terminated based on a failure to name a controlling parent company as a RPI, provides a structured approach to RPI that emphasizes control, funding, and corporate realities over formal labels. The analysis is highly fact‑dependent. There is no bright‑line rule; the inquiry turns on whether a non‑party exercised, or could have exercised, control over the petition’s filing and conduct. Evidence can be direct or circumstantial and may reflect “blurred lines” of corporate separation.
Funding matters. The Board credited evidence that the petitioner’s outside counsel billed and was paid through the parent company’s IP department and shared services, even where internal cost allocations attributed expenses to the petitioner. Payment and invoice control by a non‑party weigh in favor of RPI status.
Direction and oversight matter. In‑house attorneys from the parent’s IP department acted as case managers, provided direction to outside counsel, and participated in settlement discussions alongside corporate officers who held dual roles across related entities. Those facts supported findings that both the sister company and the parent had the opportunity to control—and did control—key aspects of the proceedings.
Corporate roles and shared business segments matter. Officers serving in identical capacities across the petitioner and affiliated entities, shared business segments, and mixed corporate communications (including engagement letters and billing appendices naming different entities) demonstrated a degree of intertwinement sufficient to treat those affiliates as RPIs.
Corning Optical thus clarifies that “association” alone is insufficient—but the combination of funding flows, case management, and practical control across affiliated entities can establish RPI status.
Corning Optical also addresses the remedy. Where a petition fails to properly identify all RPIs, the petition does not satisfy § 312(a)(2) and cannot be considered. Attempts to correct RPI disclosures post‑institution do not preserve the original filing date; amended petitions receive a new filing date under 37 C.F.R. § 42.106(b). In cases where the one‑year bar under § 315(b) would attach to the new date, dismissal and termination are warranted.
The precedential designation reinstates this sequence as the default rule: accurate RPI disclosure is a condition precedent, not a curable defect without consequence.
The accompanying memorandum explains the broader rationale for restoring Corning Optical as precedential. While SharkNinja highlighted practical difficulties in RPI determinations, policy concerns cannot override the statute’s best reading. More importantly, the Office identifies heightened risks where opaque funding and control structures allow state‑linked or sanctioned actors to covertly direct PTAB challenges in sensitive technology areas (e.g., patents on advanced technologies being attacked by foreign, state-affiliated actors). Without meaningful RPI transparency, the PTAB cannot address misuse of AIA proceedings, defend the integrity of the system, or safeguard national interests.
By enforcing § 312(a)(2), the Office positions RPI disclosure as both a legal requirement and a security imperative. Knowing who is behind a petition—who funds it, directs it, and benefits from it—is asserted by the Office to be essential to fair, accountable, and trusted adjudication.
Takeaways: For petitioners, the message is clear: conduct a rigorous, document‑backed RPI assessment before filing. Identify all entities that fund, direct, or could control the petition or proceeding, including parents, subsidiaries, affiliates, and shared‑services structures that process invoices or manage litigation. Engagement letters, billing guidelines, case‑management assignments, and internal approvals will be scrutinized.
For patent owners, accurately raised RPI challenges can be dispositive. Fact development focused on control and funding—organizational charts, officer roles across entities, billing records, shared‑services agreements, and communications reflecting case oversight—can establish that unnamed affiliates are RPIs. Where failures to identify all RPIs are shown, dismissal, vacatur of institution, and time‑bar consequences may follow.
Carl Kukkonen
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