Petitioner must prove all real parties in interest have been identified in petition for inter partes review

The appellee petitioned for inter partes review (IPR) of patents asserted in copending litigation against a distributor of a video game that Bungie had developed. The patent owner sought discovery into whether the distributor should have been named as a real party in interest in the petition. One issue on appeal was who bore the burden of showing that the identification of the real parties in interest were properly named and how such a showing can be made.

The Federal Circuit largely agreed with the burden framework used by the Patent Trial and Appeal Board (PTAB) in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper 88 (PTAB Jan. 6, 2015), though it found that the PTAB did not properly apply that framework in the current dispute. Under that framework, the burden of persuasion to show the petition is not time-barred rests with a petitioner. As to this issue, the Federal Circuit indicated there “can be no doubt.”

The Federal Circuit then turned to the PTAB’s practice of accepting the petitioner’s identification of real parties in interest at the time the petition is filed. The Federal Circuit agreed with the PTAB and held that it is proper to accept an IPR petitioner’s identification of real parties in interest “unless and until disputed by a patent owner.” A patent owner wishing to challenge the identification of real parties in interest “must produce some evidence to support its argument that a particular third party should be named a real party in interest.” The court explained that the “mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” Yet, the Federal Circuit and the PTAB parted ways on the question of whether the initial identification of real parties in interest should have a rebuttable presumption of correctness. The Federal Circuit held that it does not. 

Based on the facts of the case, the Federal Circuit vacated the PTAB’s decisions in these IPRs and remanded to allow the PTAB to reconsider the evidence in light of the principles discussed in the court’s opinion. 

A copy of the opinion can be found here