In Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., the PTAB vacated its institution decision and terminated the IPR because the petition failed to identify all real parties in interest. IPR2013-00453, Paper 88 (Jan. 6, 2015).

35 U.S.C. § 312(a)(2) provides that an IPR petition may be considered only if the petition identifies all real parties in interest. The Patent Owner challenged the petition’s identification of real parties in interest in both the Patent Owner’s Preliminary Response and a Supplemental Preliminary Response, but the Board instituted the IPR based on the record at that time.

Following additional discovery and briefing on the issue after the institution decision, the Board vacated the institution decision and terminated the IPR, finding that the Petitioner failed to meet its burden to identify all real parties in interest in the petition. In reaching its decision on the “highly fact-dependent question” of whether a real party in interest was omitted from the petition, the Board applied the factors from Taylor v. Sturgell, 553 U.S. 880 (2008).

The Board rejected the Petitioner’s argument that the remedy for its omission was not termination of the IPR but rather amendment of the petition to correct the identification of real parties in interest under 37 C.F.R. § 42.106(b). While noting that it was unaware of any instance in which the PTAB had authorized correction of a petition under 37 C.F.R. § 42.106(b) after trial institution, the Board nevertheless declined to address that argument on its merits due to a lack of sufficient briefing on the issue.

The Board also declined, due to a lack of sufficient briefing, to address the Petitioner’s argument that the assignment of a new filing date due to correction of its petition would not cause the petition to be barred under the 1-year bar of 35 U.S.C. § 315(b). The Petitioner had argued that the 1-year bar would not apply because the related district court complaint against Petitioner had been involuntarily dismissed for lack of personal jurisdiction.

As this decision shows, it is critical to identify all real parties interest in an IPR petition, and it is ultimately the Petitioner’s burden to establish the correctness of the identification if challenged. And if the correctness is challenged, Petitioners are well advised to put the merits of their position squarely before the Board as early as possible, and to seek authorization to correct the petition as early as possible if it appears the real parties in interest may not have been correctly identified.