"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."
The USPTO de-designated Proppant Express Invests. v. Oren Techs. and Adello Biologics v. Amgen as precedential because both decisions conflict with Corning Optical. Director John Squires designated Corning Optical as precedential and instructed the PTAB to restore the practice of requiring petitioners to identify all real-parties-in-interest (RPIs) prior to institution. The restoration aims to prevent exploitation of PTAB proceedings by foreign state-backed actors linked to relaxed RPI standards under prior practices. The restoration reverses the Board's 2020 SharkNinja approach and requires petitioners to satisfy 35 U.S.C. §312(a)(2) by naming all RPIs before institution.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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