Recently Acting USPTO Director Coke Morgan Stewart issued Director Review decisions revoking the Final Written Decisions in Semiconductor Components Industries, LLC v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244 (PTAB 2025). Though these decisions did not directly address the merits of whether Petitioner Semiconductor failed to list other real-party-in-interest (RPI), they may reflect a potential shift at the PTAB toward more favorable treatment of patent owners contesting RPI designations, e.g., in relation to 35 U.S.C. § 315(b), which holds that an IPR “may not be instituted if the petition . . . is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”

Here, the dispute centered on whether petitioner Semiconductor acted in privity with Intel, a customer of Semiconductor and undisputedly time-barred under § 315(b) from filing its own IPR, based on an infringement suit filed by patent owner Greenthread. In the IPRs, Greenthread argued that because Semiconductor supplied Intel with products specifically designed for Intel’s proprietary interfaces, Semiconductor should likewise be time-barred under § 315(b).

While Greenthread addressed the issue prior to institution, the Board refused Greenthread’s request for discovery into Semiconductor’s relationship with Intel at the pre-institution stage. After refusing to allow discovery into the issue, the Board instituted the IPRs, finding that Greenthread failed to submit evidence sufficient to establish Intel as an unnamed, time-barred RPI. The Board maintained its reasoning at the final written decision stage, faulting Greenthread for not renewing its motion for discovery.

Following the final written decisions invalidating the challenged claims, Semicondonductor requested Director Review on the issue of: “when a petitioner has manufactured accused products for a time-barred party, can the petitioner meet its burden to prove that it is not time-barred by presenting zero 'actual evidence' on this issue?” Semiconductor Components Industries, LLC v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244, Paper 90, 1 (PTAB 2025).

On Review, Director Stewart noted the inconsistency by the Board, where "the Board denied Patent Owner’s [discovery] motions and then cited the absence of evidence as a basis not to find a privity relationship." Id., paper 90, at 3. Finding that Greenthread “raised more than a mere possibility that discovery would yield useful information on the privity issue given that Petitioner was a supplier of a time-barred party, Intel,” Director Stewart vacated the final written decision, and remanded back to the Board to permit discovery by Greenthread on Semiconductor’s relationship with Intel. Further, Director Stewart questioned whether a petitioner could meet its burden of establishing its RPI status by offering no actual evidence on a contested RPI issue.

This decision highlights two key developments: first, there appears to be a growing willingness to scrutinize RPI disclosures more closely, at least where supplier or indemnification relationships are alleged; second, the decision affirms the that once a patent owner challenges a petitioner’s RPI status as identified in the petition, the burden shifts to the petitioner to confirm that status.

Takeaway for practitioners: Evidence of close commercial ties—especially in supplier-customer contexts—may now be sufficient to warrant further discovery on RPI and time-bar issues. Petitioners should be prepared to substantiate their RPI designations early, or risk denial based on procedural deficiencies.

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