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There are a handful of pointers for anyone affected by real party in interest issues in inter partes reviews, as Amanda Tessar, Bing Ai and Elizabeth Banzhoff of Perkins Coie explain in the second part of their article.
As set forth in part 1 of this article, the question of how a real party in interest (RPI) to an inter partes review (IPR) is determined has presented challenges and uncertainties for litigants. The RPI analysis is critical for both petitioners and patent owners, as a failure to identify an RPI may result in denial of institution, termination of an instituted trial, or severe estoppel consequences for a petitioner (and its RPIs and privies) in a parallel district court or International Trade Commission (ITC) litigation.
Whether a non-petitioner party is an RPI is a highly fact-dependent question and, accordingly, the RPI determination varies with the specific facts in each case. This area of the Patent Trial and Appeal Board (PTAB) law is still in its early stage and is evolving—making it difficult to discern the result the PTAB will reach.
The PTAB decisions to date have touched on different categories of entity situations, including:
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Amanda Tessar, Bing Ai, Elizabeth Banzhoff, Perkins Coie, IPR, patent, RPI, ITC, patent, PTAB, inter partes review, Paramount Home Entertainment,