PTAB Finds Resolution of Real-Party-In-Interest Disputes Unnecessary If Decision Would Not Impact Institution Decision

On December 04, 2020, the PTAB designated as precedential its institution decision in Sharkninja Operating LLC, et al. v. iRobot Corporation, IPR2020-00734, Paper No. 11 (PTAB Oct. 06, 2020).

Patent Owner, iRobot, argued in its Preliminary Response that institution of Petitioner SharkNinja’s IPR petition challenging U.S. Patent No. 9,921,586 should be denied under 35 U.S.C. § 312(a)(2) because the petition failed to name all real parties-in-interest (“RPI”). Specifically, Patent Owner alleged that JS Global Lifestyle is the ultimate corporate parent for all petitioner parties and argued overlapping management demonstrated JS Global Lifestyle’s involvement in the asserted IPR proceeding.

The Board determined that a resolution of the RPI dispute was unnecessary at the institution stage, citing its previous precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4, 2016), that a petition does not require a correct identification of all RPIs if the RPI issue would not affect whether institution should be granted.

In the case at hand, iRobot did not allege that the failure to identify all RPIs would result in the termination of the proceeding or denial of institution of review for any reason other than for the alleged failure of a procedural requirement that can be corrected in a later amendment. Furthermore, the Board found that JS Global Lifestyle was not barred or estopped from joining the proceeding, Petitioner offered to add its parent company if it would avoid the dispute, and there was no evidence that Petitioner purposefully omitted naming JS Global Lifestyle to gain an advantage.

Given these facts, the Board determined that resolution of such non-impactful RPI issues would have been a lengthy exercise that was unnecessary for the purposes of granting or denying institution. Therefore, in the interest of judicial efficiency, the Board refused to consider the RPI issues and granted the institution decision on the basis that SharkNinja showed a reasonable likelihood of prevailing with respect to at least one claim in its petition.