The PTAB denied two petitions for inter partes review filed by the same petitioners for failing to list all real partiesininterest. Under the AIA, a petition for inter partes review may be considered only if “the petition identifies all real parties in interest.” The patent owner argued petitioners failed to identify entities that are coplaintiffs with petitioners in the declaratory judgment actions seeking to invalidate the patents that are the subject of the petitions, filed on the same day as the IPR petition. The patent owner also argued that the nonidentified entities have a corporate relationship with each petitioner. Some of the nonidentified entities exercised control over a petitioner in connection with the dispute involving the subject patent. The board found that a parent corporation that has exercised control, on behalf of itself and a petitioner, over the dispute involving the patentatissue is a real partyininterest. The board explained that “the touchstone for determining whether a nonparty is a real partyininterest is whether the nonparty exercises control over a party’s participation in the proceeding.” And a failure to list such an entity is a basis for denying a petition for inter partes review. Furthermore, the board stated that any attempt to cure the omission to add the nonidentified entity as a real party in interest would be futile because the unidentified party has already filed the declaratory judgment suit. By filing the declaratory judgment suit, the party is estopped under AIA rules from filing an IPR petition.
Paramount Home Ent. Inc. v. Nissim Corp., IPR201400961, IPR201400962 (PTAB Dec. 29, 2014).[Scanlon (opinion), Fitzpatrick, Murphy].