Late last week, in Worlds, Inc. v. Bungie, Inc., the Federal Circuit held that the Patent Trial and Appeals Board (“Board”) must place the burden of persuasion on the Petitioner to show it has named all real parties in interest (“RPIs”) once the patent owner produces some evidence that RPIs were not named. While the question of what entities are RPIs is itself interesting and is currently working its way through the courts as specific fact patterns are considered case-by-case, this particular case dealt specifically with the question of who bears the burden of proving that all RPIs are named in a petition for inter partes review (“IPR”).
In 2012, Worlds Inc. (“Worlds”) filed a patent infringement suit against Activision Publishing, Inc. (“Activision”) and related entities in district court. In 2014, Worlds notified Activision that it intended to add the video game Destiny as an accused product in the litigation. Destiny is developed by Bungie, Inc. (“Bungie”), an independent video game developer, which is not a party to the litigation between Worlds and Activision.
Six months later, and more than 2.5 years after service of the complaint on Activision, Bungie filed IPRs challenging Worlds’ patents. Worlds contended that Activision should have been named as an RPI to the IPR proceedings, and therefore the Petitioners were time barred under 35 U.S.C. § 315(b) since the IPRs were filed more than one year after Activision was served with a complaint alleging infringement of the challenged patents. Petitioners are required to name all RPIs when petitioning for inter partes review. 37 C.F.R. § 42.8(b)(1).
The Board rejected Worlds’ argument, and instituted review. The Board concluded that “Patent Owner has not demonstrated that Activision is an unnamed real party in interest in this proceeding.” Thus the Board found that the petitions were not time-barred, and proceeded to address the patentability of the instituted claims.
On appeal a panel of the Federal Circuit reversed and remanded. The panel found that the Petitioner bears the burden to establish that it has complied with the statutory requirement to identify all RPIs once a patent owner produces “some evidence,” more than a mere assertion, that tends to show that a particular third party is an RPI.
Worlds Inc. v. Bungie, Inc. clarifies that the Petitioner bears the burden to establish that it has named all RPIs in its petition for inter partes review. Going forward, patent owners should continue to review the identification of RPIs in petitions closely as a deficiency in the identification of RPIs is grounds to stop an IPR before the merits are reached.