Who is the real party in interest when a membership organization brings an IPR?

Judges Taranto and Newman pressed an issue during a recent oral argument as to who is the real party in interest when a membership organization brings an IPR. The importance in deciding the issue is that it affects how estoppel applies during future district court litigation (at least) for that patent. Should the estoppel apply just to the membership entity itself or should it also apply to the members of the membership entity? Should it apply to only the members who fund the IPR?

From Judge Newman’s and Judge Taranto’s comments, apparently this is an issue that is percolating now in the courts. So, look for more to come from the courts on this issue.

The oral argument was in the recently decided Rule 36 Judgment in VILOX TECHNOLOGIES, LLC v. UNIFIED PATENTS, LLC, No. 2019-2057 (Fed. Cir. Feb. 14, 2023). [Opinion]. The court ultimately didn’t reach the issue in this case because the patent at issue was affirmed as invalid — thus it won’t be asserted in future litigation and estoppel won’t be an issue.

The entire oral argument is available for download here: [Link]. However, the pertinent discussion concerning who is the real party in interest when a membership organization brings an IPR is available here:

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