United States: Control Of IPR Petition Remains Primary Factor In RPI Determination

Determining the Real Party-in-Interest ("RPI") in an IPR can have critical implications for estoppel.  A patent owner can prevent institution of an IPR by showing that an RPI has previously "filed a civil action challenging the validity of a claim of the patent."  35 U.S.C. § 315(a)(1).

The Federal Circuit's decision in Global Equity Management (SA) Pty, Ltd., v. eBay Inc., maintains that the primary factor in determining whether a party is RPI is if the party is controlling the petitioner or funding the IPR proceeding.  No. 2019-1303, -1304, at 7-10 (Dec. 26, 2019).  Global Equity Management (SA) Pty, Ltd. ("GEMSA") argued that the IPR should have been terminated due to a missing RPI.  The Court found GEMSA waived its argument by not properly preserving it at the PTAB.

More importantly, however, the Court noted that even if GEMSA preserved its argument, it was still unpersuasive.  The court's decision was based on GEMSA's admission that there were no facts in the record that the missing RPI actually wrote the IPR petitions or controlled the IPR proceedings.  Global Equity, at 9.  In doing so, the Court appears to be in tension with the "flexible approach" of determining RPI established in the Federal Circuit's Decision in Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (2018) ("AIT") and recited in the PTAB's Precedential Order in Ventex Co.  The AIT decision states the flexible approach must take "into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner."  Applications in Internet Time, at 1351.

The Global Equity Management decision suggests that while the RPI analysis includes many factors, whether the party controls or funds the IPR proceeding is still heavily weighted.

Takeaway

"There is no bright line test" to determine an RPI.  Global Equity, at 7.  But one such factor courts heavily weigh is whether the party controlled or funded the IPR proceeding.

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