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Following USPTO Director John Squires' de-designation of SharkNinja Operating LLC v. iRobot Corp. as precedential, the latest round of de-designated decisions on real parties in interest (RPI) is worth consideration. Last fall, Squires returned the Patent Trial and Appeal Board (PTAB) to the controlling standard from Corning Optical Communications RF, LLC 1 v. PPC Broadband Inc., which requires the true RPIs to be identified in the petition as a threshold matter in order for the petition to be considered. See Squires' Memo.
This week, Squires de-designated two decisions, Proppant Express Invests and Adello Biologics as precedential. Each decision permitted amendments to the petitioner's identification of the real parties in interest while maintaining the original filing date of the petition. The decisions considered issues of fairness, including whether: (1) petitioner attempted to circumvent the time bar or estoppel rules; (2) petitioner acted in bad faith; (3) patent owner experienced prejudice from the delay; and (4) petitioner employed gamesmanship.
However, after reaffirmation of the Corning Optical standard for RPIs, Squires recognized that such amendments to RPIs run afoul of the strict requirements for maintaining a filing date of the petition.
An important impact of the collective de-designations is that changes to RPIs likely warrant a new, later filing date for the petition. In practicality, this could expose petitioners to the statutory bar should the later filing date exceed the one-year statutory bar period under 35 U.S.C. sec. 315(b).
Another uncertainty is the potential effects on settled expectations from the petitioner's perspective. Attributing earlier awareness of the patent to an RPI generally cuts against institution at the PTAB, not in favor of it. Although settled expectations do not operate in a vacuum, patent owners may seek every opportunity to increase the time of petitioner's knowledge to weigh in favor of discretionary denial. These de-designations warrant further consideration of RPIs when timeframes are tight.
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