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ARTICLE · 10 NOVEMBER 2017

Real Parties-In-Interest Discovery In Post-Grant Proceedings

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WilmerHale attorneys review the PTAB body of law to date on obtaining real party-ininterest discovery in AIA post-grant proceedings.

United StatesIntellectual Property
Richard W. ONeill
Richard W. ONeill
Arthur Shum
Arthur Shum
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The America Invents Act of 2011 requires petitioners in post-grant proceedings—including in all inter partes reviews (IPRs) and covered business method (CBM) reviews—to identify each ''real party-in-interest'' (i.e., ''the party or parties at whose behest the petition has been filed''). Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). For example, ''a party that funds and directs and controls an IPR or PGR petition or proceeding constitutes a 'real party-ininterest,' even if that party is not a 'privy' of the petitioner.'' Id. at 48,760.

Compliance with this threshold requirement is critical. If a post-grant proceeding petitioner fails to name a real party-in-interest, the Patent Trial and Appeal Board (PTAB) may dismiss the proceeding in its entirety. And if a patent owner faced with a post-grant proceeding can show that the petitioner is in privity with another party involved in a related litigation, the proceeding may be dismissed

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