Soccer game planRecent statistics suggest that approximately two thirds of claims challenged in IPR proceedings are held to be invalid by the PTAB.  For PTAB trials instituted on petitions filed in Art Unit 1600 at the U.S. Patent and Trademark Office, which examines patent applications in the biotechnology and pharmaceutical arts, 100% of the final decisions rendered in the first two years of IPRs resulted at least one of the challenged claims being cancelled.  For patent owners, avoiding IPR institution can be critical.

Patent owners have successfully avoided IPR institution or terminated a proceeding on the basis of the petitioner’s failure to identify the real parties in interest (RPI).  35 U.S.C. § 312(a)(2), states “[a] petition…may be considered only if…the petition identifies all real parties of interest” (emphasis added).  Thus, failure to identify all real parties in interest is grounds for denial of the petition.  A petitioner may file a corrected petition, resulting in a new petition filing date.  If the real party in interest has been served with a complaint alleging infringement of the patent, however, the one-year bar imposed by 35 U.S.C. § 315(b) may prohibit such a submission, rendering the petitioner unable to challenge the patent at the PTAB.

Establishing that a third party is a real party in interest for the purposes of an IPR can be challenging.  Real party in interest issues may arise in scenarios involving, e.g., related companies (parent/subsidiary relationships), acquisitions, joint defense groups, and indemnification agreements.  The PTAB Trial Practice Guide notes that there is “no bright-line test” for determining whether a third party is real party in interest, but does suggest that a key consideration is “whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.”  77 FR 48756, 48759 (Aug. 14, 2012).  Other considerations include, for example,

(1) whether the third party agrees to be bound by the determination of issues in the proceeding; (2) whether a pre-existing substantive legal relationship with the party named in the proceeding justifies binding the third party; (3) “in certain limited circumstances,” whether the third party is adequately represented by someone with the same interests… (5) whether the third party is bound by a prior decision and is attempting to rehear the matter through a proxy; and (6) whether a statutory scheme forecloses successive hearing by third parties.

Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper 88 (Jan. 6, 2015), p. 9 (citing Taylor v. Sturgell, 553 U.S. 880 (2008)).

Ideally, a patent owner challenges an IPR petition for failure to state a real party in interest before or in its preliminary response, which is due three months after the petition is filed.  Patent owners may continue to challenge institution of the IPR even after a petition is granted.

In Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., for example, the PTAB vacated its institution decision and terminated the IPR following additional discovery and briefing after trial institution.  IPR2013-00453, Paper 88 (Jan. 6, 2015).  See also GEA Process Eng’g Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper 135 (Dec. 23, 2014).