Addressing the real parties in interest (RPI) requirement for inter partes review (IPR) petitions, a panel for the Patent Trial and Appeal Board (PTAB or Board) declined to terminate an already instituted IPR, despite the petitioner failing to identify each and every one of the patent owner’s real-parties-in-interest. Mako Surgical Corp. v. Blue Belt Techs., Inc., Case IPR2015-00630 (PTAB, Dec. 17, 2015) (Medley, APJ).

The petitioner Mako Surgical filed an IPR petition challenging certain claims of a patent directed to facilitating the implantation of an artificial component into an anatomical joint. The petition identified Blue Belt as the patent owner and also disclosed a pending litigation between the petitioner and Blue Belt related to the same patent. As part of its mandatory notice under 37 C.F.R. § 42.8, Blue Belt disclosed that it was the exclusive licensee of the patent at issue and identified Carnegie Mellon University (Carnegie Mellon) as the patent owner. The mandatory notice further identified counsel for Carnegie Mellon as backup counsel in the IPR. The Board instituted the IPR on all challenged claims.

After institution, Blue Belt filed its preliminary response and, on the same day, filed a contingent motion to amend each of the challenged claims if the Board did not terminate the IPR proceeding for failure to name Carnegie Mellon as a real-party-in-interest or based on the merits of the case. The contingent motion to amend was expressly joined by Carnegie Mellon.

Blue Belt also sought authorization to file a motion to terminate the IPR due to the petitioner’s failure to name Carnegie Melon as a real-party-in-interest. The Board denied authorization, explaining that § 312(a)(2) only requires that the petitioner identify all of its real parties in interest, not those of the patent owner. This position is further buttressed by 42 C.F.R. § 42.8, which requires each party to identify its own real-parties-in-interest in mandatory notices. According to the Board, the patent owner is in the best position to inform the Board of its real parties in interest, and the same is true for the petitioner. It would be unreasonable, the Board explained, to require the petitioner to name all of the patent owner’s real-parties-in-interest. In this case, Blue Belt named Carnegie Mellon as a real-party-in-interest in its mandatory notice, identified counsel for Carnegie Mellon as back-up counsel in the IPR, and it filed a contingent motion to amend that was joined by Carnegie Mellon. Thus, for purpose of the present IPR proceeding, the record was clear with respect to the real-parties-in-interest.

The Board also clarified that institution of an IPR is based on the likelihood of unpatentability of a patent’s claims, independent of who actually owns the patent. Indeed, not even a change in ownership of the patent over the course of an IPR proceeding or settlement between the parties are detrimental to the Board’s decision on whether to issue a final written decision on patentability.