Who Is the Real Party in Interest in an IPR or PGR?

An inter partes review (IPR) or post-grant review (PGR) petition must tell the Patent Trial and Appeal Board who is behind the challenge. That requirement looks like paperwork, but it decides who is bound by the outcome and whether the petition was filed in time.

This article explains the legal standard. A companion piece, Attacking a patent at the PTO: beware the real party in interest, looks at the practical consequences for would-be petitioners.

The disclosure requirement

The statute says a petition may be considered only if it identifies all real parties in interest. For IPR that rule is 35 U.S.C. § 312(a)(2); for PGR it is § 322(a)(2). The Board’s rules carry the requirement into the mandatory notices: under 37 C.F.R. § 42.8(b)(1), each party must identify each real party in interest, and must update the notice if the information changes.

The term “real party in interest” (often shortened to RPI) is not defined in the statute. Its meaning has come from the USPTO’s Trial Practice Guide, Board decisions and the Federal Circuit.

The legal test

The Trial Practice Guide describes the real party in interest as the party at whose behest the petition has been filed. No single fact decides the question. The Board looks at the whole relationship between the named petitioner and the non-party, including:

• Control: whether the non-party directed, controlled or had the opportunity to control the petition.
• Funding: whether the non-party paid for the petition or the proceeding.
• Direction: whether the non-party chose the patent, the claims or the prior art, or reviewed the filing.
• Relationship: the corporate, contractual or business ties between the two, such as parent and subsidiary, indemnitor and customer, or member and membership organization.

The RPX decision

The leading Federal Circuit case is Applications in Internet Time, LLC v. RPX Corp. (Fed. Cir. 2018). RPX, a company whose business involves helping clients reduce patent risk, filed IPR petitions against patents asserted against one of its clients, which was itself time-barred. The Board had treated the question narrowly. The Federal Circuit vacated and remanded.

The court described the inquiry as flexible and practical. Its central question is whether a non-party is a clear beneficiary of the petition that has a preexisting, established relationship with the petitioner. The court also said the Board should consider the petitioner’s business model and whether the petitioner is representing someone else’s interests, not just whether the non-party controlled or funded the specific filing.

Why the answer matters

Naming the real party in interest is not only about transparency. Two key statutory consequences reach RPIs as well as the petitioner:

• The one-year time bar. Under § 315(b), an IPR may not be instituted if the petition is filed more than one year after the petitioner, its real party in interest, or a privy was served with an infringement complaint. A petitioner that was never sued can still be barred if an unnamed RPI was sued more than a year earlier.
• Estoppel. After a final written decision, § 315(e) bars the petitioner, its real party in interest and its privies from raising certain invalidity grounds again. See estoppel arising from PTAB trials. PGR has a parallel provision in § 325(e).

PGR has no one-year time bar of the same kind, because a PGR petition must be filed within nine months after grant. The disclosure duty and estoppel still apply. The related concept of privity is broader and is analyzed separately.

Correcting an RPI identification

Mistakes and later changes happen, for example after a merger or acquisition. The Board has allowed petitioners to update their real-party-in-interest identification in some circumstances, generally where the original omission was not in bad faith and adding the party would not create a time bar. The Board has also indicated it need not resolve an RPI dispute when the answer would not change the outcome, such as when no time bar or estoppel issue turns on it.

The situation is far more serious when the unnamed party was served with a complaint more than a year before the petition was filed. Then a correct identification would show the petition is time-barred, and correction does not cure that problem.

Since Thryv, Inc. v. Click-To-Call Technologies, LP (2020), the Board’s decision to institute despite a § 315(b) time-bar argument is generally not reviewable on appeal. That makes the Board’s own RPI analysis especially important. Board practice in this area evolves, so check current USPTO guidance.

Key takeaways

• IPR and PGR petitions must identify every real party in interest (35 U.S.C. §§ 312(a)(2), 322(a)(2); 37 C.F.R. § 42.8(b)(1)).
• The RPI is the party at whose behest the petition is filed; control, funding, direction and relationship all matter.
• Applications in Internet Time v. RPX (Fed. Cir. 2018) calls for a flexible, practical inquiry focused on clear beneficiaries with preexisting relationships.
• The § 315(b) time bar and § 315(e) estoppel extend to RPIs, so an omission can be decisive.
• Correction is sometimes allowed, but not where the omitted party would trigger a time bar.