The Patent Trial and Appeal Board (PTAB) signaled the importance of responding to discovery related to a petitioner’s real-parties-in-interest and privies (RPIs), reiterating that while the burden of production related to RPIs may shift between the petitioner and patent owner during the proceeding, the ultimate burden remains with petitioner to show that the petition correctly named all RPIs. I.M.L. SLU v. WAG Acquisition, LLC, Case No. IPR2016-01656, Paper 42 (PTAB, Feb. 26, 2018) (McNamara, APJ).

Under 35 USC § 312 (a)(2) and 37 CFR 42.8 (b), an inter partes review (IPR) petition must name all RPIs of the petitioner. The rationale behind this requirement is that a petitioner and its RPIs may be estopped from bringing or maintaining an IPR proceeding under certain circumstances, such as if the petitioner or any RPI was served with a complaint for infringement more than one year before the IPR petition was filed. If a petition fails to correctly list all RPIs, the PTAB may terminate the proceeding.

In this case, after the PTAB instituted review of the challenged patent, WAG (the patent owner) alleged that IML (the petitioner) failed to name at least one RPI, CoolVision. If WAG was correct, IML would have been estopped from filing the petition because CoolVision had been served with an infringement complaint more than one year prior to the date IML filed the petition. Because of the importance of this issue, the PTAB allowed limited discovery into the relationship between CoolVision and IML. IML refused to provide the requested discovery and instead filed a motion for adverse judgment to terminate the proceedings.

WAG opposed IML’s request for adverse judgment, explaining that the petition was fatally flawed from the beginning because IML failed to identify CoolVision as an RPI. The PTAB noted that while a petitioner’s identification of RPIs is generally presumed correct, this presumption is rebuttable. Where the patent owner reasonably brings into question the accuracy of petitioner’s list of RPIs, the burden remains with the petitioner to establish that it properly listed all RPIs. In this case, WAG reasonably challenged IML’s identification of RPIs, and IML failed to provide any evidence to the contrary. Based on this failure, the PTAB found that IML did not carry its burden of showing that the petition correctly named all RPIs. The PTAB thus terminated the proceeding and vacated the decision to institute review.