On October 28, 2025, United States Patent and Trademark Office ("USPTO") Director John A. Squires issued a memorandum to all Patent Trial and Appeal Board ("PTAB") judges re-designating Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) ("Corning") as a precedential decision. This follows Director Squires' decision on September 26, 2025 to de-designate SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) ("SharkNinja"), as precedential.

Why this matters?

• At least while this Memorandum is effective, any parties seeking to file an inter partes review (“IPR”) must ensure that all real parties-in-interest (“RPI”) be identified. Failure to do so could result in the dismissal of the IPR.
• Amending the RPIs on an existing petition will now result in the amendment date being deemed the filing date. The adjusted filing date may then run afoul of the 35 U.S.C. § 315(b) statutory bar date of one year for filing an IPR challenging the validity of a patent when "the petitioner, real party in interest, or privy of the petitioner [has been] served with a complaint alleging infringement of the patent."
• Any patentee whose patent(s) is subject to an IPR should conduct a detailed analysis of all parties related to the petitioner(s) to ensure that all RPIs are listed. If any RPIs are missing, the patentee could seek dismissal of the IPR.

Background

• The Director's actions as described in the Memorandum were taken to restore the "pre-SharkNinja practice of requiring [Inter Partes Review or "IPR"] petitioners to identify the real parties in interest ("RPIs") to their petitions before institution."
• An RPI is not defined in 35 USC Chapter 31. As described in Corning, an RPI has the opportunity to control, and actually controls, a Petitioner’s participation in an IPR proceeding. Prior cases noted that there is no bright-line rule establishing who is and is not a RPI and that such a determination is highly fact specific. Exemplary facts leading to the determination that a non-party is a RPI include whether the non-party "'funds and directs and controls' an IPR petition or proceeding; the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition."
• In the SharkNinja decision, the PTAB panel held that "...we need not address whether JS Global is an unnamed RPI because, even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315. Under the Board’s precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., our jurisdiction to consider a petition does not require a 'correct' identification of all RPIs in a petition. ..."

Why does identifying all RPIs matter?

• The Memorandum emphasizes that failure to correctly identify all RPIs behind an IPR petition "raises significant national-security concerns" and that the "[USPTO] cannot address the misuse of [IPRs] by foreign adversaries unless it requires parties to identify RPIs."
• The Memorandum notes that "parties ‘involved in activities that are contrary to the national security or foreign policy interests of the United States’ ...have filed a substantial and increasing number of lPRs." The Memorandum specifically calls out Yangtze Memory Technologies Co. Ltd., DJI, Huawei Device Co., Ltd. and Huawei Technologies Co., Ltd., and Semiconductor Manufacturing International Corporation as examples of parties on the Department of Commerce "entity list" that have filed numerous IPRs.