United States: RPI Determination At Institution Stage Precluded From Review On Appeal

In ESIP Series 2, LLC v. Puzhen Life USA, LLC, No. 2019-1659 (Fed. Cir. May 19, 2020), the Federal Circuit affirmed the PTAB's final written decision on an IPR filed by Puzhen, holding (1) claims of ESIP's patent are obvious under 35 U.S.C. § 103 and (2) § 314(d) precludes judicial review of the Board's "real parties in interest" ("RPI") determination.

In the final written decision, the Board found ESIP's claims obvious over the prior art. The Board also rejected ESIP's argument that Puzhen's IPR petition was barred due to alleged failure to name two alleged RPIs, concluding that neither was an RPI under § 312(a)(2).    

On appeal, in addition to the obviousness finding, ESIP challenged the Board's determination that the two unnamed parties were RPIs, arguing that "the Board erred when it considered institution of inter partes review." The Court rejected ESIP's argument under relevant precedents, drawing a parallel between the one-year-bar statute and the real-party-in-interest statute, both of which provide conditions on institution. The Court concluded that ESIP's challenge to the Board's RPI determination raised a dispute about application of an institution-related statute, and therefore § 314(d) precluded judicial review. Accordingly, the Court affirmed the Board's final written decision.