With Wi-Fi One v. Broadcom currently awaiting its time at the Federal Circuit, St. Louis patent litigator Doug Robinson spoke to Law360 about the issue at the center of the matter: the failure to name real parties-in-interest (RPI).
At its core, an RPI can be defined as a party that “desires review” of a patent. This can include parties that contribute to or lead litigation efforts; fund litigation efforts; or urge another party to bring a petition against a patent holder at the Patent Trial and Appeal Board (PTAB).
The reason RPIs are such a weighty topic is because Inter Partes Reviews at the PTAB can only be considered if all RPIs are named. Failing to name an RPI can sabotage any current proceeding — as well as future proceedings.
Inherent in this issue is the fact that an unnamed RPI’s efforts generally take place behind the scenes. Doug Robinson compares it to the alter ego analysis in corporate law. “What often you see in alter ego is this level where this person is controlling the strings, they’re the man behind the curtain,” he said.
“That’s what you have to prove here, rather than just a relationship or another party that would be happy if the patent goes away,” Robinson added, stressing the difficulty of separating RPIs from companies who simply benefit from a patent being axed in an IPR.
The other main consideration for the naming of RPIs is the estoppel provision. Estoppel attaches to all RPIs, even those at district courts and the U.S. International Trade Commission.
Naming all parties at the beginning of a case, however, can save considerable time, effort and money for all parties involved.
In the case of Wi-Fi One v. Broadcom, Wi-Fi One is attempting to expand the concept of RPI to include parties with which Broadcom is “in privity.” If successful, this would make it easier for defendants to identify RPIs who support petitioners and therefore nullify the proceedings altogether.
IPR Petitioners should give deliberative attention to properly naming RPIs, because a mistake on this point can provide the patent owner with a procedural kill shot to the proceeding.