On October 28, 2025, USPTO Director Squires designated as precedential Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) (precedential, except for § II.E.1), a PTAB decision from 2015 addressing the issue of real parties-in-interest (RPI) in AIA proceedings. This adds to a list of cases already designated informative or precedential on this issue.
In this case, after the patent owner requested to file motions to dismiss three petitions after institution for failure to identify all RPI, the Board authorized discovery motions and briefing and held an oral hearing on the issue. In its decision, the Board determined that the petition failed to name all RPIs (i.e., a parent and sister company). On that basis, the Board granted the motions to dismiss, vacated the institution decisions, and terminated the IPRs. The Board stated that under 35 U.S.C. § 312(a)(2), “an IPR petition may be considered ‘only if’ it identifies ‘all’ real parties-in-interest.”
The precedential designation of this 10-year-old decision comes on the heels of Director Squires recently de-designating a 2020 decision, SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11, at 16–20 (PTAB Oct. 6, 2020) (designated precedential Dec. 20, 2020), which likewise addresses RPI.
In SharkNinja, the Board held that a RPI analysis is not required at the institution stage absent an allegation from a patent owner that a one-year time-bar or estoppel under § 315 is implicated—i.e., only if naming all RPIs correctly would affect whether the Board may institute under the statute. Thus, the recent de-designation and designation here represents a shift in policy put in place five years ago by previous Director Iancu.
Memorandum explaining Director’s rationale
Also on October 28, Director Squires issued a memorandum explaining his rationale. Although he acknowledged the difficulty of determining RPI in many cases as a “legitimate policy concern,” he pointed to other considerations unrelated to those at issue in SharkNinja or Corning that “have come into clearer focus since SharkNinja was decided.”
In particular, the Director discussed generally “exploitation by foreign state-backed actors” in relation to AIA proceedings, stating the requirement to list all RPI going forward is “a national-security measure.” The Director also stated “AIA proceedings should not be used by foreign adversaries to harass American patentees or otherwise provide an advantage to those that wish us ill.” He noted that identifying all RPIs is required to address this misuse.
What is not designated precedential
It is noteworthy that the designation of Corning excludes § II.E.1 of the decision. This section discusses a patent owner’s burden as it relates to RPI challenges. It explains that although a petitioner maintains the ultimate burden regarding RPI requirements, a “patent owner challenging a RPI disclosure must provide sufficient evidence to show the disclosure is inadequate.” Exclusion of this section may create uncertainly as to what burden or role a patent owner has in identifying a RPI issue in a case.
Other precedential decisions relating to RPI
One question still in play is whether a petitioner may amend its petition to disclose additional RPIs and still retain its original petition filing date. In Corning, the Board concluded no, “even if Petitioner amended its Petitions, those Petitions would receive a new filing date,” which would have triggered a one-year bar date under § 315(b) in the case.
There are several PTAB decisions designated precedential after 2015 (and still precedential today) on this topic, including Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, Paper 38 (March 4, 2016) (explaining § 312(a) is not jurisdictional and a petition may change a RPI listing via an updated mandatory notice and maintain its original filing date if the RPI change occurs after filing the petition); Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2017-01917, Paper 86 (February 13, 2019) (allowing a post-institution update to mandatory notices to add RPI); Adello Biologics LLC v. Amgen Inc., Case PGR2019-00001, Paper 11 (February 14, 2019) (allowing a pre-institution update to mandatory notices to add RPI).
Stay tuned!
The impact of recent activity relating to RPI considerations is likely to be relevant to on-going and future cases at the Board. Corning itself provides detailed analysis about how to determine who is a RPI, as does the precedential decision in RPX Corp. v. Applications in Internet Time, LLC, IPR2025-01750, Paper 128 (PTAB Oct. 2, 2020) (designated precedential Dec. 4, 2020). We also may see more guidance from the USPTO in this area, and possibly proposed rulemaking.
