The America Invents Act (AIA) requires that petitioners in both inter partes review (IPR) and post grant review (PGR) proceedings before the Patent Trials and Appeals Board (PTAB) identify the real parties in interest.  The AIA includes a so-called “estoppel” provision.  The estoppel provision precludes not only the petitioner but any real party-in- interest (RPI) as well as any party who is in privity with the petitioner from challenging the validity of a patent claim which has been subject to a final decision of the PTAB, in a future proceeding at the US Patent and Trademark Office (USPTO), in courts or before the International Trade Commission based on any ground that the “petitioner raised or could have raised during that inter partes review.”

The identification of the real party-in-interest may not be straightforward in situations in which the PTAB decision may directly or indirectly affect parties other than the petitioner itself.  Whether a corporate subsidiary initiating an IPR or PGR should identify its parent entity as a real party-in-interest or whether an IPR or PGR petition initiated by one co-defendant in a patent litigation suit could subject the others to the estoppel provision are examples of questions that a would-be petitioner should consider before filing a petition for IPR or PGR.

In a “Patent Triad Practice Guide” published on August 14, 2012, USPTO emphasized that the identification of a real party-in-interest is a highly fact-dependent analysis in which “a common consideration is whether the non-party exercised control over a party’s participation in a proceeding.”  The Guide, however, indicates that there “is no ‘bright-line test’ for determining the necessary quantity or degree of participation to qualify as a ‘real party in interest’ or ‘privy’ based on the control concept.”  By way of example, the Guide provides that the mere membership of a party in a trade association does not make that party a real party-in-interest or a privy of the association with respect to an IPR petition filed by the association. “Similarly, if Party A is part of a Joint Defense Group with Party B in a patent infringement suit, and Party B files a PGR petition, Party A is not a ‘‘real party-in-interest’’ or a ‘‘privy’’ for the purposes of the PGR petition based solely on its participation in that Group.”

Although in the context of an inter partes reexamination (a proceeding now replaced by IPR) , a recent decision by PTAB denying a petition by a patentee (Beacon Navigation GmbH ) to vacate the grant of a request for reexamination by a challenger (Volkwagen Group of America) based on the allegation that the challenger had failed to identify certain co-defendants in a related patent litigation suit as real parties-in-interest may shed some light on whether an IPR proceeding initiated by one co-defendant in patent litigation would implicate the other co-defendants who were not named in the IPR as real parties-in-interest in the IPR.  Inter Partes Reexamination No. 95/001852

The USPTO indicated that “[T]he common interest among litigation defendants seeking to invalidate or defend against enforcement of a patent … does not translate ipso facto into each defendant being a real party in interest where a request for reexamination is filed by only one of the defendants in the litigation.”  Rather, “to be required to be named as a real party in interest, a party must participate in some manner in the request for reexamination. “ (emphasis in original)  The USPTO further indicated that “[E]vidence that the activities were conducted with an intent to file an inter partes reexamination request is required, in order for a petitioner to establish that other defendants in the litigation are real parties in interest in a request for reexamination.” (emphasis in original)  Thus, for a co-defendant in patent litigation to be a “real party in interest” to an IPR proceeding, actual evidence of intent to file an IPR is required.