Throughout the Patent Trial and Appeal Board’s (“PTAB”) history, patent owners have tried to leverage a petitioner’s alleged failure to name all real parties-in-interest (“RPIs”) as a way to achieve denial of an inter partes review (“IPR”) petition or trial termination. The effectiveness of those efforts has ebbed and flowed. Initially, some PTAB panels viewed naming of RPIs as a jurisdictional requirement, concluding that RPI-naming errors were not fixable after the 35 U.S.C. § 315(b) one-year bar. Petitioners could lose their petition filing date based on RPI missteps, resulting in then untimely petitions. Later decisions backed away from that hardline stance, finding that some RPI errors made without deceptive intent were fixable. Regardless, petitioners are tasked with identifying RPIs to the best of their ability.
For the first six years of PTAB post-grant trial practice, the RPI analysis focused on whether an unnamed party exerted sufficient “control” over the petition, relying on factors such as having input into whether a PTAB challenge was filed, payment of PTAB-related attorney/filing fees, and selection of prior art in determining whether an unnamed party was an RPI. In Applications in Internet Time v. RPX Corp. (“AIT”), the Federal Circuit faulted the PTAB for focusing too narrowly on “control.” The court stated that a flexible approach should be used to determine whether a non-party is an RPI. This flexible approach requires both equitable and practical considerations in determining whether a non-party is an RPI. This paper analyzes post-AIT Federal Circuit and PTAB decisions addressing RPI challenges, including the PTAB’s precedential decision in Ventex Co., Ltd, v. Columbia Sportswear North America, Inc (“Ventex”). The analysis demonstrates that in many cases, both the Federal Circuit and the PTAB continue to focus primarily on the “control” factor in analyzing RPI issues.