By: Jasper L. Tran and S. Christian Platt

In prior blog posts, we have commented on PTAB decisions terminating IPR proceedings due to the Petitioner’s failure to identify all real parties-in-interest. See blog posts on Sanction For Failing to Update Real Party In Interest and More On Real Party In Interest.  On February 26 and 27 of 2018, the PTAB again terminated three IPR proceedings because of the Petitioner’s failure to refute challenges to its identification of all real parties-in-interest.  IML SLU v. WAG Acquisition, LLC, Nos. IPR2016-01656, Paper No. 42 (P.T.A.B. Feb. 26, 2018);  IML SLU v. WAG Acquisition, LLC IPR2016-01658, IPR2017-01179, Paper No. 42 (P.T.A.B.).

An IPR petition “may be considered only if . . . the petition identifies all real parties in interest.”  35 U.S.C. § 312(a).  The PTAB generally accepts the Petitioner’s identification of real parties-in-interest.  Though the Petitioner’s identification of real parties-in-interest receives the benefit of a rebuttable presumption under Federal Rule of Evidence 301, the burden of persuasion does not shift and remains with the Petitioner who had it originally.  In contrast, the burden of rebutting the presumption that real parties-in-interest have been identified is on the Patent Owner to show that an unnamed party is a real party-in-interest or privy to the Petitioner.  When the Patent Owner provides sufficient rebuttal evidence that reasonably questions the accuracy of the Petitioner’s identification of the real parties-in-interest, the Petitioner’s failure to carry its burden to persuade the PTAB of its compliance with the statutory requirement to identify all real parties-in-interest may result in termination of the IPR proceeding.

In IML SLU, the PTAB granted the Patent Owner’s motion for discovery on the real parties-in-interest issue.  Later, the Patent Owner moved for additional discovery from the Petitioner, IML, regarding an undisclosed real party-in-interest, CoolVision.  Shortly before the scheduled discovery hearing on the merits, IML requested leave to withdraw its IPR Petitions, but the PTAB nonetheless held the discovery hearing.  IML maintained its refusal to participate in discovery and its counsel was not authorized to answer specific questions about the subject matter.  The PTAB then ordered IML to either answer the discovery requests or file a motion for adverse judgment.  IML elected to file a motion for adverse judgment.

The Patent Owner, however, sought termination of the IPR proceedings because IML failed to name at least one real party-in-interest, CoolVision.  The Patent Owner argued that IML offered to admit that IML and CoolVision are commonly owned and controlled, but retracted its offer when the Patent Owner declined to forgo pursuit of future discovery on this issue in exchange for IML’s admission.

The PTAB was persuaded that the Patent Owner has provided sufficient rebuttal evidence that reasonably questioned the accuracy of IML’s identification of the real parties-in-interest.  That is because IML failed to rebut the evidence and allegations made by the Patent Owner and declined to answer further discovery and is willing to accept adverse judgment as a consequence.  Accordingly, the PTAB terminated the proceedings, vacated its Decisions on Institutions, and dismissed IML’s Petitions.

These decisions again emphasize the importance of correctly, and thoroughly, identifying all real parties-in-interest in an IPR petition, and the risks of failure to do so.  When the Patent Owner challenges the real parties-in-interest identification with evidence and allegations to the contrary, the Petitioner must satisfy its burden of persuasion to refute such evidence and allegations to avoid termination of the IPR proceeding.

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S. Christian Platt

Christian Platt is an experienced patent trial lawyer who handles complicated intellectual property disputes in the courts and the patent office, including patent infringement, patent validity, trade secret, and licensing disputes. He has tried multiple bench and jury trials. Christian has represented some of the world's largest companies in their most complex patent disputes involving, in many instances, more than a billion dollars in potential damages. He handles a variety of technologies, including biotechnology, pharmaceuticals, telecommunications, video games, computer hardware, software, networking technologies, and medical devices.