SharkNinja Operating LLC v. iRobot Corp., Case IPR2020-00734, Paper 11
- Real parties-in-interest: At the institution stage, resolving whether a non-party is a real party-in-interest is unnecessary, unless estoppel or a time bar under 35 U.S.C. § 315 applies.
In this case, the PTAB declined to consider whether the petitioner identified all real parties-in-interest (RPI) at the institution stage. The patent owner argued the petition was defective and should be denied under 35 U.S.C. § 312(a)(2) for failure to name all RPIs. Paper 6, 29-38. The PTAB authorized additional briefing from both parties on the issue. Paper 11, 17.
Section 312(a)(2) mandates that a “petition identify all real parties in interest.” Id. This provision serves dual functions—“to patent owners, to identify whether the petitioner is barred from bringing an IPR due to an RPI that is time-barred or otherwise estopped, and to the Board, to identify conflicts of interests that are not readily apparent from the identity of the petitioner.” Id. Whether a non-party is a RPI is a highly “fact dependent” inquiry that involves several factors. Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018).
The Board first explained that “correct” identification of all RPIs is not required at the institution stage and that “the Director can, and does, allow the petitioner to add a real party in interest.” Paper 11, 18 (citing Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1379 n.9 (Fed. Cir. 2019); Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38, 6 (PTAB Mar. 4, 2016) (precedential)). The Board further noted some panels engage in “extensive analysis” to determine whether a non-party is a RPI, “even where there is no allegation that the failure to name the purported RPI results in time bar, estoppel, or anything else material to the case.” Id. at 19. Other panels have conversely “determined that such a lengthy exercise is unnecessary for the purposes of rendering a decision on institution of trial.” Id.
Here, the Board reconciled the two approaches and declined to perform any analysis. The Board reviewed the patent owner’s three pre-institution briefs (spanning more than twenty pages) alleging petitioner did not name all RPIs. The Board ultimately found the patent owner’s arguments were insufficient in that they did not allege that failure to name all RPIs “should result in termination of the proceeding or denial of institution of review for any reason other than the alleged failure of a procedural requirement that can be corrected under our precedent.” Id. at 18. Further, the evidentiary record did not indicate that the non-party was time barred or estopped from the proceeding, or “that Petitioner purposefully omitted [non-party] to gain some advantage.” Id. at 19. As such, the Board refused to consider whether the non-named party was a RPI—finding the RPI analysis unnecessary and eschewing it altogether “better serves the interest of cost and efficiency.” Id. at 20.
- By designating this opinion as precedential, the Board has made clear that at the institution stage, it is unnecessary to determine if a non-party is a RPI, when there are no allegations or evidence of a time bar or estoppel.
- The Board will avoid a lengthy RPI analysis in the interest of cost and judicial efficiency absent a potential material effect of the analysis on the IPR proceeding.
- Barring evidence that failure to name a non-named party a RPI is time barred, estopped, or otherwise material to the case, it is likely futile for Patent Owners to pursue a denial under 35 U.S.C. § 312(a)(2) at the institution stage.