USPTO De-Designates Two PTAB Decisions on RPIs in Light of Corning Optical

The U.S. Patent and Trademark Office (USPTO) de-designated two decisions having to do with real-parties-in interest (RPIs) from precedential status on Tuesday.

The Office de-designated Proppant Express Invests., LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86 (PTAB Feb. 13, 2019); and Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11 (PTAB Feb. 14, 2019). According to a USPTO email sent Tuesday, both decisions conflict with the decision in Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) (precedential).

USPTO Director John Squires in October 2025 sent a memo to all administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) designating Corning Optical as precedential and informing APJs that the agency was restoring the practice of requiring petitioners before the PTAB to identify all RPIs prior to institution. The change was intended to address the exploitation of PTAB proceedings by foreign state-backed actors arising as an unintended consequence of less stringent RPI standards enforced by previous administrations.

Squires’ memo said that he was restoring RPI identification requirements that existed prior to the Board’s 2020 decision in SharkNinja Operating LLC v. iRobot Corp., in which an RPI analysis wasn’t required for institution unless time-bar or estoppel issues were implicated by an RPI claimed by the patent owner. After removing the precedential designation from SharkNinja in late September, Squires’ memo announced that the RPI identification requirement would be restored by designating Corning Optical as precedential. In Corning Optical, the PTAB ruled that petitioners must satisfy 35 U.S.C. § 312(a)(2) by identifying all RPIs before the Board can consider instituting the petition.

In both Proppant and Adello, the PTAB “held that a petitioner may amend its identification of real parties in interest (RPIs) while maintaining the petition’s original filing date after considering: (1) whether the petitioner has attempted to circumvent the time bar or estoppel rules; (2) petitioner bad faith; (3) prejudice to a patent owner from the delay; and (4) petitioner gamesmanship,” said the USPTO email.

But in Corning Optical, the Board held that “a petitioner’s amended identification of RPIs requires according the petition a new filing date.”

While acknowledging the legitimate policy concern presented by the difficulty of identifying all RPIs in certain cases, Squires noted in his October memo that foreign exploitation of the PTAB has arisen as a significant countervailing consideration since SharkNinja was made precedential. Relaxed standards for identifying RPIs prior to institution of IPR proceedings has enabled the covert financing of IPR proceedings by state-backed entities looking to gain an advantage over their competition, many of them U.S. companies, by directing patent challenges in semiconductors, artificial intelligence, or other fields of emerging technology.