PTAB’s RPI identification requirement restored to exacting pre-SharkNinja standard
PTAB’s RPI identification requirement restored to exacting pre-SharkNinja standard
The change is meant is intended to address the exploitation of PTAB proceedings by foreign state-backed actors arising as an unintended consequence of less stringent RPI standards enforced by previous administrations.
Director of the U.S. Patent and Trademark Office (USPTO) John Squires has sent a memo to all administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) informing them that the agency is restoring the practice of requiring petitioners before the PTAB to identify all real parties in interest (RPI) before institution. The change is meant to address the exploitation of PTAB proceedings by foreign state-backed actors arising as an unintended consequence of less stringent RPI standards enforced by previous administrations.
Director Squires in his memo told PTAB APJs that he was restoring RPI identification requirements that existed prior to the Board’s 2020 decision in SharkNinja Operating LLC versus iRobot Corp. wherein an RPI analysis wasn’t needed or institution unless time-bar or estoppel issues were implicated by an RPI claimed by the patent owner. Squires’ memo, after removing the precedential designation from SharkNinja in late September, announced that the RPI identification requirement would be restored by designating Corning Optical Communications RF, LLC versus PPC Broadband, Inc. (2015) as precedential. The PTAB in Corning Optical ruled that petitioners must satisfy 35 U.S.C. § 312(a)(2) by identifying all RPIs before the Board can consider instituting the petition.
Squires, while acknowledging the legitimate policy concern presented by the difficulty of identifying all RPIs in certain cases, noted that foreign exploitation of the PTAB has arisen as a significant countervailing consideration since SharkNinja was made precedential. The covert financing of IPR proceedings by state-backed entities looking to gain an advantage over their competition has been enabled by relaxed standards for identifying RPIs prior to institution of inter partes review (IPR) proceedings. Many of them, US companies, by directing patent challenges in semiconductors, artificial intelligence, or other fields of emerging technology.
In the US patent landscape, national security concerns have come under scrutiny in recent months, with Director Squires’ memo noting this increased focus both during the Senate IP Subcommittee’s hearing this May on foreign threats to American innovation and in his own statement to the subcommittee in early October.
A growing number of IPR petitions are being filed by foreign entities that have already been identified by the Office of Foreign Assets Control and the US Trade Representative as being involved in tech misappropriation or forced tech transfer since SharkNinja.
As per USPTO data, if treated as a single entity, such companies would rank among the top 10 IPR filers at the PTAB from 2019 through 2024 with Huawei, DJI and ByteDance/TikTok among the most prolific IPR petitioners from that group.
