Whether a non-identified party is a real party-in-interest to a proceeding is a highly fact-dependent question. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)).  “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Trial Practice Guide, 77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895). 

Given the significant estoppel provisions in the AIA, real parties-in-interest and privity issues are commonly disputed at the PTAB.  See yesterday’s blog post “Real Party in Interest – A Strategy For Attacking IPR Petitions” for a brief review of the challenges Patent Owners face establishing that a Petitioner failed to name all real parties-in-interest and the factors the PTAB considers when presented with the issue.

On May 28, 2015, the Board issued its decision in Huawei Device USA, Inc. and ZTE (USA), Inc. v. SPH America, LLC and Electronics and Telecommunications Research Institute, IPR2015-00203, denying institution of all of the challenged claims of U.S. Patent No. 8,532,231 (“the ‘231 patent”).  Although the petition was denied based on obviousness grounds, the Board determined that the Petitioner did not fail to name real-parties-in-interest and thus represents yet another example of a Patent Owner failing to convince the Board that the Petitioner did not name all real parties-in-interest.

Although the petition was denied based on obviousness grounds, the Board determined that the Petitioner did not fail to name real-parties-in-interest and thus represents yet another example of a Patent Owner failing to convince the Board that the Petitioner did not name all real parties-in-interest.

In its preliminary response, the Patent Owner argued that the Petition failed to name ZTE Corporation.¹  The Patent Owner also argued that the Petition failed to name Huawei Technologies Co., Ltd. (“Huawei Tech.”), Futurewei Technologies, Inc. (“Futurewei Tech.”), and Shenzhen Huawei Investment and Holding Co., Ltd. (“Shenzhen”).²

The Board concluded that the Patent Owner failed to provide evidence to show that an unnamed party exercised or could have exercised control over, for example, drafting and filing the IPR petition.  This is yet another example of the Board taking the position that  “[b]eing a co-defendant in a related case does not, without more, establish control or the ability to control a proceeding.” (page 8)

¹ ZTE Corporation is the parent company of ZTE USA and the Patent Owner argued that assertions made jointly by both parties during a related district court case are sufficient to show that ZTE Corporation is a real party-in-interest for purposes of the IPR proceeding.

² Huawei Tech. and Futurewei Tech. are co-defendants with Huawei USA in a related district court case, and Huawei USA, Huawei Tech., and Futurewei Tech. are each subsidiaries of Shenzhen.