35 U.S.C. §§ 312(a)(2) and 322(a)(2) provide that IPR, CBM and PGR petitions may be considered only if all real parties-in-interest are identified in the petition. The Trial Practice Guide provides that “[w]hether a party who is not a named participant in a given proceeding nonetheless constitutes a ‘real party-in-interest’ or ‘privy’ to that proceeding is a highly fact-dependent question.” 77 Fed. Reg. 48759 (Aug. 14, 2012).
RPX Corp. v. VirnetX Inc., IPR2014-00171, Paper 49 (PTAB June 5, 2014). RPX Corp. identified itself as the only RPI. Apple Inc. had previously filed IPR petitions that were determined to be time-barred. Apple paid RPX $500K to file the IPR petitions. Apple was a client of RPX. Due to Apple’s involvement and funding, the Board determined that Apple was a proxy of RPX, and therefore, RPX was time-barred because its proxy was time-barred. The Board determined that petitioner was, “at most, a ‘nominal plaintiff’ with ‘no substantial interest’ in [the inter partes review] apart from those of its client,” who was determined to be an RPI.
Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., IPR2013-00606, Paper 13 (PTAB Mar. 20, 2014). The Board denied institution on the basis that petitioner, Zoll Lifecor, should have named its parent, Zoll Medical, as an RPI. The Board indicated that Zoll Medical was time barred under 35 U.S.C. § 315(b). The Board determined that Zoll Medical exercised consistent control over petitioner for over six years, including control of the IPR. The Board held that “[t]he non-party’s participation may be overt or covert, and the evidence may be direct or circumstantial—but the evidence as a whole must show that the non-party possessed effective control from a practical standpoint.” In addition, the Board indicated that while common counsel alone is not dispositive of control, petitioner’s actions have blurred the lines of corporate separation with Zoll Medical such that Zoll Medical has had control, or could have controlled petitioner, in all aspects of its business.
GEA Process Eng’g, Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper 140 (PTAB Dec. 23, 2014). The Board terminated the proceeding under 35 U.S.C. § 312(a)(2) on the basis that petitioner did not name all RPIs. The Board determined that petitioner should have named its co-defendant in the related district court litigation as an RPI in the proceeding, because the co-defendant paid funds toward the preparation of the petition. Petitioner and the co-defendant entered into an agreement to jointly defeat the patent in the district court litigation, and to share the costs in invalidating the patent. The district court litigation and IPR expenses were jointly billed by petitioner’s counsel. The Board determined that since the co-defendant contributed to funds that were used to pay for the preparation of the petition, the co-defendant was an RPI. The Board reasoned that since the co-defendant funded part of the IPR funds, the co-defendant had an opportunity to control the proceeding.
Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., IPR2014-01288, Paper 13 (PTAB Feb. 20, 2015). RPI is the relationship between a party and a proceeding, and does not describe the relationship between the parties. The relevant inquiry is the degree of control a nonparty can exert over an inter partes review proceeding, not over the petitioner. In determining whether a nonparty is an RPI to a proceeding before the Board, the inquiry is whether someone other than the named petitioner is “litigating through a proxy.” In other words, if a nonparty can influence a petitioner’s actions in a proceeding before the Board, to the degree that would be expected from a formal co-petitioner, that nonparty should be considered an RPI to the proceeding. In contrast to the RPI inquiry, which focuses on a party’s relationship to a proceeding, the privity inquiry focuses on the relationship between the parties. In the context of § 315(b), the goal of the preclusion is to prevent successive challenges to a patent by those who previously have had the opportunity to make such challenges in prior litigation. The Board’s focus of the privity inquiry is on the relationship between the parties during the prior lawsuit. The Board determines whether the named petitioner and the prior litigant’s relationship, as it relates to the prior lawsuit, is sufficiently close such that the petitioner could have had a full and fair opportunity to litigate the validity of the patent in the lawsuit.
JP Morgan Chase & Co v. Maxim Integrated Prod., Inc., CBM2014-00179, Paper 11 (PTAB Feb. 20, 2015). The Board held that a substantial resubmission of a petition filed in an earlier proceeding was not a sufficient basis, by itself, for determining that a co-petitioner in the earlier proceeding was a RPI in a later proceeding.
Zerto, Inc. v. EMC Corp., IPR2014-01254, Paper 35 (PTAB Mar. 3, 2015). The Board denied institution on the basis that petitioner did not identify all RPIs. The Board determined that petitioner should have named its parent company as an RPI because the parent company had an opportunity to control the proceeding due to shared corporate leadership. The Board reasoned that it is unclear whether petitioner and its parent operate as separate and distinct entities, or whether they operate as a single entity. The Board indicated that a petition is presumed to accurately identify all RPIs. When patent owner provides sufficient evidence prior to institution that reasonably brings into question the accuracy of petitioner’s RPI identification, the overall burden remains with petitioner to demonstrate that it has complied with the statutory requirement to identify all RPIs. An indemnification clause, by itself, is not dispositive with respect to whether the indemnitor exercises or could exercise control over an IPR proceeding.
VMware, Inc. v. Good Technology Software Inc., IPR2015-00027, Paper 11 (PTAB Mar. 6, 2015). The Board denied institution on the basis that petitioner was time-barred under § 315(b) because it acquired AirWatch LLC, which was served with a complaint for infringement more than one year prior to the filing date of the petition. AirWatch was served approximately two years before the petition was filed. Petitioner acquired AirWatch approximately eight months before the petition was filed. Petitioner argued it should not be barred because it was not in privity with AirWatch at the time AirWatch was sued. The Board disagreed, finding privity under § 315(b) is not determined only at the time of service. Because AirWatch, a privy of petitioner, was served more than a year before the petition was filed, petitioner was barred.
Askeladden LLC v. McGhie, IPR2015- 00122, Paper 30 (PTAB Mar. 6, 2015). After consideration of patent owner’s preliminary response and petitioner’s authorized reply, the Board determined that petitioner should have named its parent as an RPI. The parent entity is a banking industry group representing numerous financial institutions. The parent entity formed petitioner to implement an initiative developed by the parent for challenging patents that affect the financial services industry. Pursuant to 37 C.F.R. 42.106(b), the Board vacated the previously-accorded filing date of the petition and provided petitioner an opportunity to correct the petition. Responsive to the Board’s order, petitioner filed an updated mandatory notice adding its parent as an RPI, and the petition was accorded a filing date as of the date the updated mandatory notice was filed. There was no time bar under 35 U.S.C. § 315(b).
Sony Computer Entm’t America LLC v. Game Controller Tech. LLC, IPR2013-00634, Paper 31 (PTAB Apr. 2, 2015). The Board denied patent owner’s motion to terminate for an alleged failure to name all RPIs. The Board denied the motion as being untimely and on the merits. Patent owner was found to be on notice of the relevant facts before the petition was filed. Patent owner did not challenge the RPI identification in its preliminary response. Rather, patent owner waited until six weeks before the Board was required to issue its final decision. Additionally, petitioner would have been time barred had the motion been granted at this late stage of the proceeding. The Board indicated that granting patent owner’s motion at such a late stage would encourage patent owners to delay presenting RPI challenges until after all the merits in the review had been briefed and argued. The Board’s rules require the opposite behavior to secure the just, speedy, and inexpensive resolution of every proceeding.
Nissan N. Am., Inc. v. Diamond Coating Techs., LLC, IPR2014-01546, Paper 10 (PTAB Apr. 21, 2015). The Board rejected patent owner’s argument that institution should be denied on the basis that petitioner did not name all RPIs. The Board determined that the existence of an indemnification agreement was not sufficient to establish that the unnamed parties were real parties-in-interest to the inter partes review proceeding. The Board held that “[t]he mere existence of an indemnification agreement does not establish that the indemnitor has the opportunity to control an inter partes review.”
Reflectix, Inc. v. Promethean Insulation Tech. LLC, IPR2015-00039, Paper 18 (PTAB Apr. 24, 2015). The Board denied institution on the basis that petitioner did not identify all RPIs. The Board determined that petitioner’s parent company should have been named as an RPI on the basis of shared corporate leadership which had directed the filing of the IPR petition. The Board noted that the central determination as to whether a party is an RPI is whether “a party other than the named petitioner was controlling, or capable of controlling, the proceeding before the Board.” The Board indicated that “[w]hile complete control is not required, ‘if a nonparty can influence a petitioner’s actions in a proceeding before the Board, to the degree that would be expected from a formal copetitioner, that nonparty should be considered a [RPI] to the proceeding.’” (quoting Aruze Gaming, IPR2014-01288, Paper 13 at 12 (PTAB Feb. 20, 2015). The Board denied petitioner’s request to amend the RPI identification, holding that petitioner did not show good cause exists to justify an alteration in the RPI identification. The Board indicated that petitioner misunderstood the law as it applies to the RPI determination. The Board also noted that petitioner did not ask to amend the RPI identification until after patent owner raised the issue.
Jiawei Tech. (HK) Ltd. v. Simon Nicholas Richmond, IPR2014-00935, Paper 52 (PTAB Aug. 21, 2015). The Board denied patent owner’s motion to terminate the proceeding, determining that petitioner named all RPIs. The Board rejected patent owner’s argument that one of petitioner’s parent entities should have been named as an RPI. Petitioner (Coleman) was served with a complaint for infringement of the patent, not its parent. Therefore, the Board reasoned that petitioner, not its parent, desires review of the patent. Neither corporate control nor mutual interest in invalidity, alone, is sufficient to deem a non-party an RPI. The Board also noted that petitioner, not its parent, funded the proceeding. The fact that the parent entity was identified on the checks “just indicated where the administrative unit that processed the payments was physically located.” Further, the Board noted that patent owner only produced evidence of theoretical control, but did not provide sufficient evidence that the parent entity had any actual control over petitioner’s participation in the proceeding. In addition, the Board indicated that although petitioner and its parent share the same officers, patent owner did not provide evidence showing that the officers had the ability to, or in fact did, blur the lines between their respective roles in the organizations. The Board also held that compliance with 35 U.S.C. § 312(a)(2) is judged at the time the petition is filed.
Caterpillar, Inc. v. Esco Corp., IPR2015-01032, Paper 12 (PTAB Oct. 15, 2015). Petitioner identified itself as the only RPI in the proceeding. In the preliminary response, patent owner argued that the petition was defective because it failed to identify Raptor and Caterpillar Global Mining, Inc. (“CGM”) as additional RPIs. Raptor and CGM were co-defendants with petitioner in the related litigation, and CGM is a wholly owned subsidiary of petitioner. The Board indicated that this corporate relationship suggests that petitioner controls CGM, but it does not suggest that CGM controls petitioner. The Board also indicated that patent owner did not provide any evidence that CGM controls petitioner in the IPR proceeding. The Board therefore determined that CGM is not an RPI. Patent owner argued that Raptor, as the seller to petitioner of the products accused of infringement in the related litigation, bears responsibility as the indemnitor for petitioner. The Board determined that such an indemnitor relationship, by itself, is not sufficient to demonstrate that Raptor funded or controlled petitioner in the IPR proceeding. At most, patent owner has shown that Raptor and CGM are joint defendants with petitioner in the related litigation, which is not enough to demonstrate that Raptor and CGM were RPIs in the IPR proceeding.
Par Pharmaceutical, Inc. v. Horizon Therapeutics, Inc., IPR2015-01117, Paper 13 (PTAB Nov. 4, 2015). The Board determined that petitioner’s parent company was not an RPI because the evidence presented did not show actual control of the IPR proceeding by the parent company. Petitioner’s parent company develops, manufactures and distributes generic pharmaceutical products, shares corporate leadership with petitioner, asserted, in a SEC filing, that “we” (parent company and petitioner) filed the IPR petition challenging the patent, and controlled petitioner’s activities in an unrelated litigation. The Board indicated that this evidence did not establish adequately that the parent company had control over the IPR proceeding.
Cox Communications, Inc. v. AT&T Intellectual Property I, L.P., IPR2015-01227, Paper 13 (Nov. 19, 2015). Patent owner asserted its patent against petitioner and its regional subsidiaries in the related district court litigation. Petitioner did not name any of the regional subsidiaries as RPIs in the petition. In its preliminary response, patent owner argued that the petition should be denied because petitioner did not name its regional subsidiaries and another wholly-owned subsidiary as RPIs. Patent owner argued that petitioner is a holding company and that the regional subs are accused of infringing the challenged patent, so petitioner filed the petition as a surrogate for the regional subsidiaries. The Board disagreed with this argument, finding that patent owner did not demonstrate that how the regional subsidiaries controlled, directed, or funded petitioner’s participation in the IPR proceeding. At most, patent owner has shown that petitioner and its regional subsidiaries are joint defendants in the related district court case and therefore shared a common interest in rendering the challenged claims unpatentable. This common interest, however, is not enough to demonstrate that petitioner’s regional subsidiaries should have been identified as RPIs in the petition.
Elekta, Inc. v. Varian Medical System, Inc., IPR2015-01401, Paper 19 (PTAB Dec. 31, 2015). The Board permitted petitioner to amend the identification of RPIs as set forth in the petition and maintain the original filing date accorded to the petition. The Board indicated that “35 U.S.C. § 312(a)(2) does not define our jurisdiction with respect to inter partes review proceedings.” In addition, the Board indicated that § 312(a)’s emphatic “may be considered only if” language does not make its requirements jurisdictional. Because Congress has not clearly stated that it is jurisdictional, the Board treated § 312(a) as non-jurisdictional in character. The Board stated that “[o]ur governing statutes, including § 312(a), leave the Board with discretion to permit correcting defects in a petition without changing the filing date.”
TradeStation Group, Inc. v. Trading Technologies Int’l, Inc., CBM2015-00161, Paper 29 (PTAB Jan. 27, 2016). The Board disagreed with patent owner’s arguments that an unnamed party, which is petitioner’s co-defendant in the related litigation, should have been named as an RPI simply because the petition and supporting exhibits are substantially identical to the documents filed in the co-defendant’s petition and supporting exhibits submitted against the same patent. The fact that petitioner admitted that it substantially copied the unnamed party’s petition and exhibit did not establish sufficiently that the unnamed party had control over the filing of the petition in the IPR proceeding.
Zero Gravity Inside, Inc. v. Footbalance System Oy, IPR2015-01769, Paper 17 (PTAB Feb. 12, 2016). The Board held that merely being an executive or board member of petitioner does not establish sufficiently that the executor or board member, in his or her individual capacity, exercises control or has an opportunity to exercise control of the IPR proceeding, as opposed to in his or her capacity as an executive or board member of petitioner.
Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00731, Paper 39 (PTAB Mar. 2, 2016) (precedential). The Board denied patent owner’s motion to terminate for failure to name all RPIs. In doing so, the Board rejected patent owner’s argument that the Board lacked jurisdiction to consider the petition. The Board adopted the rationale set forth in Elekta that 35 U.S.C. § 312(a) does not define the Board’s jurisdiction to consider a petition. Rather, § 312(a) sets forth requirements that must be satisfied for the Board to give consideration to a petition, but a lapse in compliance with those requirements does not deprive the Board of jurisdiction over the proceeding, or preclude the Board from permitting such lapse to be rectified.
Coalition for Affordable Drugs VIII, LLC v. The Trustees of the Univ. of Pennsylvania, IPR2015-01835, Paper 7 (PTAB Mar. 7, 2016). The Board held that the fact that petitioner named other subsidiary organizations as RPIs in one proceeding is not sufficient, by itself, to demonstrate that those subsidiary organizations should have been named as RPIs in the instant proceeding.
Petroleum Geo-Services Inc. v. Westerngeco LLC, IPR2014-00688, Paper 106 (PTAB Mar. 17, 2016). The Board held that a request for rehearing is not the appropriate avenue to submit new evidence to challenge petitioner’s RPI identification. Petitioner filed a petition against a related patent one week after the final written decision in the current proceeding. In the later petition, petitioner identified a third party as an RPI that was not identified as an RPI in the instant proceeding. The final decision had been entered and the record was closed in this IPR proceeding. The Board declined to consider whether such an “admission” would necessarily require a finding that the newly named RPI in the other proceeding should have been identified as an RPI in the instant proceeding. The Board indicated that it was too late to introduce this evidence to support the argument after the final written decision was entered.
Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., IPR2015-01309, Paper 25 (PTAB Apr. 7, 2016). The Board denied patent owner’s motion to terminate the proceeding and granted patent owner’s alternative motion to reset the filing date of the petition to the date on which petitioner filed an updated mandatory notice naming five additional RPIs. There was no indication of any intentional concealment or any other bad faith in petitioner’s actions regarding its RPI identification in this proceeding. “Petitioner maintains that it named all RPIs in the Petition, and states that it added five additional RPIs, out of an abundance of caution, after Patent Owner raised the issue. There is no indication of a material advantage being afforded to Petitioner as a result of adding RPIs at this stage, or a material disadvantage to Patent Owner.” The Board also noted that no bar to institution under 35 U.S.C. § 315 applies to the proceeding. The Board exercised its discretion under 35 U.S.C. § 316 and 37 C.F.R. §§ 42.5 and 42.71 to reset the filing date of the petition. The Board accorded the petition a filing date on the date that petitioner filed its updated mandatory notices.
Hughes Network Sys. v. Calif. Inst. of Tech., IPR2015-00059, Paper 42 (PTAB April 21, 2016). The Board held that, although petitioner has the ultimate burden of persuasion in an IPR, once petitioner has represented what it believes to be a proper identification of the RPI(s), patent owner has the burden of production in establishing that a real party-in-interest has not been named.
Enovate Medical, LLC v. InterMetro Industries Corp., IPR2015-00300, Paper 54 (PTAB May 11, 2016). The Board denied patent owner’s motion to terminate for failure to name all RPIs. Patent owner alleged that petitioner’s parent company should have been named as an RPI because of shared corporate leadership and the parent company’s alleged involvement in petitioner’s business operations. The Board noted that it was petitioner alone who stood accused of infringement in the related lawsuit. Patent owner has not shown that the parent company had a legal, and not merely a financial interest, in the IPR proceeding. As noted in the Trial Practice Guide, the RPI is the party that desires review of the patent. Here, it is petitioner who, having been sued for infringement, desires review of the patent.
Unified Patent Inc. v. Am. Vehicular Scis., LLC, IPR2016-00364, Paper 13 (PTAB June 27, 2016). The Board rejected patent owner’s argument that institution should be denied for failure to identify all RPIs. Patent owner alleged that petitioner was paid by its members to challenge patents, and that all funding for its IPR activity came directly from its members. The Board concluded that the mere fact that members provide payment to petitioner for a subscription to petitioner’s services is insufficient to show that these members are funding this particular IPR. The evidence did not show an obligation on petitioner’s part to file IPR proceedings on behalf of any member in return for payment, nor did it show that petitioner’s members had any control over when and how petitioner spent the revenue received from its members. Instead, the evidence showed that petitioner made all decisions regarding any IPR proceeding without input from its members, and that petitioner alone bore all costs of any such proceeding.
Aerospace Comms. Holdings Co., Ltd. v. The Armor All/Step Prods. Co., IPR2016-00441, Paper 12 (PTAB June 28, 2016). The Board authorized petitioner to file an updated mandatory notice to add new RPIs while maintaining the filing date accorded to the petition. Citing Lumentum, the Board indicated that a lack of compliance with § 312(a)(2) does not preclude the Board from permitting the lapse to be rectified if there was no intentional concealment or other bad faith in not initially naming the additional RPIs. The Board rejected patent owner’s assertion that it would be prejudiced by the addition of RPIs, indicating that the addition of new RPIs does not alter the underlying prior art grounds on which the claims are challenged. By naming the additional RPIs, petitioner is subjecting additional parties to the estoppel provisions that apply to RPIs, which is a meaningful consequence that benefits patent owner. Noting that a § 315(b) time bar did not apply, the Board indicated that requiring petitioner to re-file its petition would delay and add expense to the proceedings for both the parties and the Board. While acknowledging patent owner’s concerns that allowing amendment of the RPI identification may encourage gamesmanship, the Board indicated that petitioner’s late action is excused on a showing of good cause and would be in the interests of justice.
1964 Ears, LLC v. Jerry Harvey Audio Holding, LLC, IPR2016-00494, Paper 21 (PTAB July 21, 2016). The Board rejected patent owner’s argument that the petition should be denied for a failure to identify two related parties, the named owner of petitioner and another company, as RPIs. Patent owner argued that petitioner should have identified its owner as an RPI because he is the “Governing Person” of petitioner, and has exclusive control over the actions taken by petitioner. The Board disagreed. Petitioner is a limited liability company that lacks a corporeal body, and can therefore only act through the actions of its agents and managers. It is only when a closely held LLC fails to elect its classification for tax purposes that the IRS disregards the entity as separate from its owner. Patent owner provides no evidence in this regard. With respect to the other company, the Board indicated that although the evidence cited by patent owner evinces some blurring between the corporate identifies of petitioner and the other company, the evidence fails to show that the other company controlled or had the opportunity to control petitioner’s actions in filing the petition—a central question to be resolved in finding a non-named party should have been named an RPI.
Petroleum Geo-Services Inc. v. WesternGeco LLC, IPR2014-01478, Paper 72 (PTAB July 11, 2016). The Board rejected patent owner’s argument that the petition should have been denied based on petitioner’s alleged failure to name all RPIs. Patent owner argued that petitioner and another company who was also sued by patent owner are privies, and that petitioner was time-barred because the other company was served with a complaint several years before the petition was filed. Patent owner argued that petitioner is a privy of the other company because petitioner asked the company to develop, and now purchases, the allegedly infringing product from the other company under a contractual agreement. The Board indicated that the weight of this evidence bears more heavily towards a finding that the relationship was contractual, a fairly conventional purchaser-manufacturer relationship, with discussions and communications undertaken generally at arms-length. The Board indicated that patent owner did not provide a sufficient factual basis upon which to conclude that petitioner and the other company are privies. Further, the nature of shared interests in invalidating the patent, undertaking a joint defense and assertion of a common interest privilege does not, without more, indicate privity between petitioner and the other company. The Board determined that patent owner did not demonstrate that the other party controlled, or had the opportunity to control, petitioner’s involvement in the IPR proceeding. The Board also indicated that an indemnification agreement does not establish that the other company had an opportunity to control petitioner in the IPR.
Dr. Reddy’s Labs., Ltd. v. Invidior UK Ltd., IPR2016-01113, Paper 8 (PTAB Aug. 4, 2016). The Board authorized patent owner to file a motion for additional discovery to request documents related to whether petitioner named all RPIs. Patent owner believed that a third party may be a RPI and is in privity with petitioner based on a press announcement of an agreement between petitioner and the third party as well as a related notice by the Federal Trade Commission. Patent owner argued that the agreement with the third party covered the drug at issued in the related district court litigation between petitioner and patent owner.
Dynamic Air Inc. v. M-I Drilling Fluids UK Ltd., IPR2016-00256, Paper 28 (PTAB Aug. 19, 2016). The Board denied patent owner’s motion to terminate the proceeding for an alleged failure to name all RPIs. Patent owner alleged that a subsidiary of petitioner had an opportunity to exercise control over the IPR proceeding. Patent owner argued that the subsidiary would benefit more than petitioner from invalidation of the patent. The Board indicated that “[e]ven if true, this suggests at most that [the subsidiary] has a reason to want to control Petitioner, but such a reason is not evidence of control or the opportunity to control.” The Board held that the evidence as a whole did not establish that the subsidiary effectively controlled petitioner with regard to the proceeding. Petitioner benefits from the proceedings because it expresses a desire to market equipment in the U.S., while the subsidiary does not. The evidence does not demonstrate that petitioner acted as proxy for its subsidiary nor as a nominal plaintiff.
Interactive Brokers LLC v. Chart Trading Development, LLC, CBM2016-00038, Paper 14 (PTAB Aug. 23, 2016). One of the core functions of the RPI and privies requirement is “to assure proper application of the statutory estoppel provisions, i.e., to protect patent owners from harassment via successive petitions by the same or related parties and to prevent parties from having a second bite at the apple.” The burden of proof is on patent owner to show that an un-named party is an RPI. The Board addresses this highly fact dependent question on a case by case basis. The evidence in this proceeding did not demonstrate that the relationship between petitioner and the customer-defendants was sufficiently close such that, in the absence of their voluntary estoppel stipulation in the district court, both petitioner and the customer-defendants should be bound by the trial outcome and associated estoppels.
CaptionCall, L.L.C. v. Ultratec, Inc., IPR2015-00636, Paper 99 (PTAB Sept. 8, 2016). The Board denied patent owner’s motion to dismiss for failure to name all RPIs. Patent owner alleged that petitioner’s parent company should have been identified as an RPI. The Board indicated that patent owner’s evidence, taken as a whole, was insufficient to establish, by a preponderance of the evidence, that petitioner’s parent company is a RPI to this proceeding. Patent Owner’s evidence demonstrates a relationship between petitioner and its parent, which is not sufficient to demonstrate a relationship between the parent company and this proceeding. Patent owner’s evidence points to proceedings that are not at issue. Having determined patent owner has not met its burden to establish the parent company is a RPI to this proceeding, the Board indicated that it did not need to decide whether patent owner’s motion is timely.
CGQ, Inc. v. Chart Trading Development, LLC, CBM2016-00048, Paper 12 (PTAB Sept. 12, 2016). In an institution decision, the Board rejected patent owner’s argument that the petition should be denied for a failure to name all RPIs. The Board indicated that it was not persuaded that patent owner’s evidence reasonably establishes or brings into question that the customer defendants in the related district court litigation are RPIs in the CBM proceeding. “[S]tatus as a co-defendant of a joint defense group is insufficient to establish that the customer defendants had the required control over the filing of the Petition in this proceeding.” The Board indicated that patent owner did not present persuasive evidence that the customer defendants have any influence or control over petitioner’s actions in the CBM proceeding. The mere fact that they are customers of petitioner and share a common litigation counsel does not elevate them to RPIs in the CBM proceeding.
Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2015-00826, Paper 32 (PTAB Sept. 20, 2016). The Board denied patent owner’s request to file a motion to terminate the proceeding for petitioner not identifying all RPIs. After the oral hearing and before the final written decision, petitioner’s parent, which was identified as an RPI in the petition, merged with another entity. Petitioner did not submit an updated mandatory notice to identify the new entity with which its parent merged. Citing the Lumentum decision, the Board indicated that petitioner’s failure to submit an updated mandatory disclosure did not deprive the Board of jurisdiction. The Board ordered petitioner to file an updated mandatory notice with current RPI information, and authorized patent owner to file a motion for sanctions in support of its allegation that petitioner failed to comply with its requirement to file updated mandatory notice information.