Yangtze Memory Technologies Company, Ltd. v. Micron Technology, Inc.

Informative decision only: persuasive authority, not binding precedent. When a patent owner produces some evidence that tends to show a particular third party should be named a real party in interest, the petitioner bears the burden to bring forth evidence or arguments showing that it named all RPIs under 35 U.S.C. § 312(a)(2); if it does not provide sufficient argument and evidence, the Director may vacate institution, deny the petitions, and terminate the proceedings. A petitioner whose petitions are denied for this reason cannot cure by adding the omitted RPI where doing so would be time-barred. No prior precedent directly addressed this issue as the text frames it, but the Director applied Corning Optical (precedential except § II.E.1) and noted that the Board had declined to resolve the RPI dispute in view of SharkNinja, which was de-designated on Sept. 26, 2025. For petitioners, a petition's RPI identification can no longer be left unexamined merely because adding the party would create no § 315 time bar or estoppel; once the patent owner puts RPI in dispute, a petitioner that argues only what it is not risks vacatur of institution and denial, and any correction may be time-barred. For patent owners, producing evidence such as ownership, government statements and lawmaker statements about control can shift the burden to the petitioner and support Director Review and denial of institution. The Director relied on Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018) for the patent owner's burden of production and the petitioner's burden of persuasion, and on Saint Regis Mohawk Tribe v. Mylan Pharms. Inc., 896 F.3d 1322 (Fed. Cir. 2018) for the USPTO's public-interest role. LEGAL TEST OR STANDARD: Under 35 U.S.C. § 312(a)(2), a petition may be considered only if it identifies all real parties in interest. The patent owner must first produce some evidence that tends to show a particular third party should be named an RPI (Worlds). Once RPI is in dispute, the petitioner bears the burden to bring forth evidence or arguments demonstrating that it named all RPIs. If the Office cannot conclude that all RPIs were identified, the petitions are not in condition for consideration. TRIGGERING FACTS: Patent owner submitted four categories of evidence that a foreign government was an RPI: articles on the government's investment in and control of the semiconductor industry; articles on its controlling interest in Petitioner through the parent corporation; statements from U.S. lawmakers; and Department of Defense statements. The evidence included parent ownership by state-owned enterprises and the foreign government's own description of Petitioner as a state-owned enterprise. Petitioner responded only by arguing the evidence showed mere investment in the parent and by arguing what it is not, did not dispute its Entity List inclusion, and its show-cause response did not clarify its identity. The time bar would apply if the foreign government were added as an RPI. KEY QUOTE: "In short, Petitioner’s failure to provide clarity as to its actual identity is fatal to its petitions." (Paper 38, p. 6) PRIOR PRECEDENT AFFECTED: Follows Corning Optical Commc’ns RF, LLC v. PPC Broadband, Inc., IPR2014-00440, Paper 68, at 23–25 (PTAB Aug. 18, 2015) (precedential, except § II.E.1). Notes that the Board declined to resolve the RPI dispute in view of SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) (de-designated Sept. 26, 2025). Applies Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018). PRACTICE TIP: When a patent owner puts RPI in dispute with evidence of ownership or control, petitioners should submit affirmative evidence and argument that identify who actually funds, directs and controls the petition, rather than arguing what the petitioner is not. Patent owners should develop and cite concrete evidence of control and ownership at the preliminary response stage.