IP Law Daily, PATENT—P.T.A.B.: USPTO Director restores strict real-party-in-interest requirement for IPR petitions, (Oct 29, 2025)

By Ravindra Kumar Singh, B.L.

USPTO reinstates pre-2020 rule requiring complete identification of all real parties in interest prior to institution of IPRs.

In a memorandum to Patent Trial and Appeal Board Judges, dated October 28, 2025, U.S. Patent and Trademark Office Director, John Squires, reinstated the agency’s pre-2020 standard governing identification of real parties in interest (RPIs) in inter partes review (IPR) proceedings. The Director designated as precedential Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (P.T.A.B. Aug. 18, 2015), excluding section II.E.1, and de-designated SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (P.T.A.B. Oct. 6, 2020). The action restores the requirement that petitioners must identify all RPIs before institution and cannot amend petitions to cure omissions.

Background. Under 35 U.S.C. § 312(a)(2), an IPR petition “may be considered only if the petition identifies all real parties in interest.” The 2015 Corning Optical decision held that compliance with this provision is a statutory prerequisite to institution. In that case, Corning Optical Communications RF, LLC filed IPR petitions challenging three PPC Broadband patents but failed to identify its parent company, Corning Inc., and its sister company, Corning Optical Communications LLC, as RPIs.

After authorizing discovery, the PTAB found that counsel from Corning Inc.’s intellectual property department directed the IPRs, that invoices were sent to and paid by Corning Inc., and that senior executives of Corning Inc. and Corning Optical Communications LLC controlled the proceedings. The Board determined that these entities “exercised, or could have exercised, control” over the petitions and therefore qualified as RPIs. Because the omission rendered the petitions defective, the PTAB vacated its earlier institution decisions and terminated the reviews.

The Board rejected arguments that the defect was curable post-institution or that vacatur was prohibited by 35 U.S.C. § 314(d). It held that § 312(a)(2) imposes a statutory condition precedent and that the Director lacks authority to institute review where RPI identification is incomplete. The ruling emphasized that an improperly filed petition loses its filing date and cannot be refiled if barred under § 315(b).

By contrast, in the 2020 SharkNinja decision, the PTAB held that the failure to resolve RPI disputes prior to institution did not preclude the proceeding. The panel reasoned that § 312(a)(2) was not jurisdictional and allowed uncertainty over RPI identity to be addressed later. That interpretation, though non-precedential, influenced PTAB practice for several years by permitting post-institution corrections and relaxing enforcement of § 312(a)(2).

Director’s memorandum. Director Squires’s October 28 memorandum rescinds the SharkNinja approach and restores Corning Optical as the controlling interpretation. The memorandum explains that § 312(a)(2)’s phrase “may be considered only if” leaves no discretion to defer compliance and that petitioners must ensure full and accurate disclosure at the time of filing. Petitions omitting RPIs are “statutorily deficient” and cannot be cured after institution.

The memorandum further links RPI transparency to national security considerations. It observes that the failure to identify controlling or funding entities may obscure participation by foreign or restricted organizations. The Director referenced the Department of Commerce’s Entity List, noting that foreign-controlled entities, including Huawei Technologies Co., Ltd., DJI, and Yangtze Memory Technologies Co., had indirectly participated in PTAB challenges through affiliates. He cautioned that incomplete disclosure undermines both the integrity of administrative adjudication and the protection of sensitive technologies.

The Director concluded that the Office must prioritize statutory compliance and transparency over efficiency concerns and directed all PTAB panels to ensure that RPI sufficiency is resolved before institution.

Effect of precedential designation. By designating Corning Optical as precedential, the Director made its reasoning binding on all future PTAB panels. The designation requires strict pre-institution enforcement of § 312(a)(2) and bars petitioners from supplementing RPI disclosures after filing. Petitions failing to identify all RPIs must be dismissed, and any attempt to refile may be time-barred under § 315(b) if more than one year has passed since service of a district court complaint.

The memorandum also formally removes SharkNinja from the list of precedential and informative decisions. The de-designation eliminates reliance on its flexible interpretation and clarifies that PTAB panels lack the discretion to overlook or defer RPI issues for administrative efficiency reasons.

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