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Board Declines to Resolve Real Party In Interest Dispute

The PTAB has seen its share of cases where technical defects in a petition resulted in early termination of the case.  One such defect occurs when a petitioner fails to identify all real parties in interest (RPIs) during an IPR proceeding.  If the RPI identification error is discovered after the one-year bar under 35 § 315(b) the proceeding may be terminated because the defect cannot be cured prior to the one-year bar.  So careful petitioners will try to include all RPIs, but the test for an RPI is not always clear.  To avoid termination of the proceeding, IPR petitioners may err on the side of over-naming persons as RPIs.

But what happens when a person is named a RPI, but believes it is not an RPI?  What if anything should the misnamed person do about it?  And what should the Board do about a misnamed RPI?

This very issue was raised in GEP Power Products, Inc. v. Arctic Cat Inc., IPR2016-01385, Paper 11, (P.T.A.B. Nov. 5, 2016).  A named RPI (Polaris) requested and obtained a conference call with the parties to the IPR and the Board because it believed it was misnamed as an RPI by the Petitioner.  In the call the Petitioner explained it is a supplier to the named RPI, that it has an indemnification agreement between it and the RPI, and that it named Polaris as an RPI “out of an abundance of caution.”  The Board did not authorize changes to the documents or further filings:

We do not reach the issue of whether Polaris is a real party in interest. Neither Petitioner nor Patent Owner contend that Petitioner’s identification of real parties in interest should be amended. Instead, Patent Owner’s arguments during the conference focused on whether Polaris should be subject to estoppel in other proceeding(s). We decline to address such prospective questions which, in our view, should be raised and decided by the tribunal before which estoppel is alleged to apply. Because neither party has raised any issue concerning the identification of real parties in interest in the Petitions, there is presently no issue regarding real parties in interest before us to decide.

We further agree with Polaris that the mere listing of a real party in interest by a party, standing alone, is not tantamount to us finding that a listed entity is actually a real party in interest. Here, as discussed above, we do not reach the issue of whether Polaris is in fact a real party in interest to these proceedings.

Consequently, the Board declined to make further findings about whether Polaris was misnamed as a RPI, however, all of the parties’ positions are on record.  The Board has not yet decided whether to institute IPR, so it is not certain that the RPI issue will be associated with any final written decision and any resulting estoppel.

Timothy Bianchi

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