privity and real-party-in-interest in post-grant proceedings judge michael tierney, uspto matthew...

Privity and Real-Party-in-Interestin Post-Grant Proceedings

Judge Michael Tierney, USPTOMatthew Berkowitz, Kenyon & Kenyon

Eliot Williams, Baker Botts

June 4, 2015

Why Privity/RPII Matters

• Naming All RPIIs Is A Statutory Requirement– IPR: 35 U.S.C. § 312(a)(2): "A petition . . . may be

considered only if . . . the petition identifies all real parties in interest"

– PGR/CBMR: 35 U.S.C. § 322(a)(2)

• No Requirement to Name Privies– Joe Matal, A Guide to the Legislative History of the America Invents Act: Part

II, 21 Fed. Cir. Bar J. 539, 607 n. 424 • "Both Senator Kyl…and the 2011 Committee Report…described §312

and 322 as also requiring the petitioner to disclose 'privies.' The final public law, however, only requires identification of 'all real parties in interest.'"

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• One Year IPR Bar Tied to Privity/RPII:– 35 U.S.C. § 315(b): "An inter partes review 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"

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• Declaratory Judgment Bar Tied to RPII (Not Privity):– IPR: 35 U.S.C. § 315(a)(1): "An inter partes review

may not be instituted if, before the date on which the petition . . . is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent"

– PGR/CBMR: 35 U.S.C. § 325(a)(1)

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• IPR -> Civil Action/ITC Estoppel Tied To RPII/Privity– 35 U.S.C. § 315(e)(2): "The petitioner in an inter

partes review of a claim . . . that results in a final written decision . . . or the real party in interest or privy of the petitioner, may not assert [in litigation] that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review."

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• PGR -> Civil Action/ITC Estoppel Tied To RPII/Privity– 35 U.S.C. § 325(e)(2): "The petitioner in a post-

grant review of a claim … that results in a final written decision . . . or the real party in interest or privy of the petitioner, may not assert [in litigation] that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review."

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• IPR -> PTAB Estoppel Tied To RPII/Privity– § 315(e)(1): "The petitioner in an inter partes

review of a claim . . . that results in a final written decision . . . or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review."

7


• PGR/CBMR -> PTAB Estoppel Tied To RPII/Privity– § 325(e)(1): "The petitioner in a post-grant review

of a claim . . . that results in a final written decision . . . or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review."

8


• CBMR -> Civil Action/ITC Estoppel Tied To RPII (Not Privity)– AIA § 18(a)(1)(D): "The petitioner in [CBMR] …

that results in a final written decision . . . or the petitioner's real party in interest, may not assert [in litigation] that the claim is invalid on any ground that the petitioner raised during that [CBMR]."

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General Concepts From theTrial Practice Guide

. “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” 77 Fed. Reg. 48,761

. “at a general level, the ‘real party-in-interest’ is the party that desires review of the patent.” 77 Fed. Reg. 48,759

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Distinction between Privity and RPI• “RPI is the relationship between a party and a proceeding; RPI does not

describe the relationship between parties.” Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., IPR2014-01288 (Feb. 20, 2015) (emphasis in original).

• “In contrast to the RPI inquiry, which focuses on a party’s relationship to a proceeding, the privity inquiry focuses on the relationship between parties.” Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., IPR2014-01288 (Feb. 20, 2015) (emphasis in original) (citing Int’l Nutrition Co. v. Horphag Research, Ltd., 220 F.3d 1325, 1329 (Fed. Cir. 2000).

• “the notion of ‘privity’ is more expansive and encompasses parties that do not necessarily need to be identified in the Petition as a real party-in-interest.” Nestle USA, Inc. v. Steuben Foods, Inc., IPR2014-01235 (Dec. 22, 2014)

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A Few Instructive PTAB Decisions

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13

Intellectual Ventures v. Xilinx, Inc.IPR2012-00018 (Jan. 24, 2013)Decision - Real Party In Interest

Background • Intellectual Ventures ("IV") filed IPRs against four Xilinx Patents.

• Xilinx relied on Rule 7.1 statement filed by IV in an unrelated district court litigation that identified 63 entities having a financial interest in that case.

• Xilinx argued that the 63 additional entities were unnamed real parties in interest, due to their financial interest in IV.

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Intellectual Ventures v. Xilinx, Inc.IPR2012-00018 (Jan. 24, 2013)Decision - Real Party In Interest

Holding • Board cites to Trial Practice Guide (TPG) for guidance regarding factors to

consider in determining RPII• Considerations include:

– whether a non-party exercises control over a petitioner's participation in a proceeding

– whether a non-party is funding the proceeding– whether a non-party is directing the proceeding

• Held: Xilinx's evidence insufficient to show the unnamed parties were RPIIs

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Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc.

IPR2014-01288 (Feb. 20, 2015)Institution Decision

• Website and public documents suggest “blurred [] corporate forms”

• Held: AGA is not an RPII from available evidence

Mr. Okada

AGA AGM

100% 100%

(AGA sued for infringement in D. Court)

(AGM files IPR 2 years after suit against AGA; only identified RPII)

Same law firm

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Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc.

• AGA’s acts in District Court– “Whether or not AGM is an RPII to the District Court action [] is

not determinative of the question of whether AGA is an RPII to this inter partes review. ”

• Sister companies owned by one person– “common ownership of the companies does not prove that AGA

… can exercise control over AGM”• Blurred corporate forms

– Documents fail to “establish anything more than that the companies are sister corporations.”

– Unchallenged declaration of AGM’s assistant GM (Mr. Yu)• No argument by Patent Owner that Mr. Okada was an unnamed

RPII

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Synopsys, Inc. v. Mentor Graphics Corp.IPR2012-00042 (Feb. 22, 2013)

Institution Decision• May 2006: EVE served with complaint• Sep. 26, 2012: Synopsys files IPR• Sep. 27, 2012: Synopsys acquires EVE• Held: EVE is not in privy with Synopsys

– Privy determined at time of IPR filing date , not Institution Dec.– “[A]ny privity created by successive interests in EVE’s products,

does not apply here”; “The only property right at issue in this proceeding is that of the [] patent”

Common Fact Patterns Raising RPII/Privity Issues

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• Trade Associations and Joint Defense Groups

• Supplier-Customer Relationships and Indemnities

• Related Companies

• M & A

• Same Counsel

Trade Associations and JDGs

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Trade Associations:RPX Corp v. Virnetx, Inc.

IPR2014-00171 through – 00177 (June 5, 2014)

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Aug. 2010

Apple sued

July 2013

Apple Files IPRs

Nov. 2012

Apple sued again (additional products)

Apple’s own petitions are denied

Apple coordinates with RPX

Aug. - Oct. 2013

Dec. 2013

• Pursuant to agreement, Apple paid RPX 500k to “file” challenges for “patents of questionable quality”;

• Evidence that RPX and Apple considered Virnetx patents to be of questionable quality;

• Specific discussions of IPRs vs. Virnetx patents between Apple and RPX

RPX files IPRs

Nov. 2013

Dec. 2012

Apple loses 1st jury verdict

Dec. 2013

RPX Corp v. Virnetx, Inc.

• Held: RPX’s petitions are barred under Section 315(b) since Apple was an unnamed RPI

• Reasons:– Apple at least suggested that RPX file challenges to the

specific Virnetx Patents– Evidence suggests that Apple implicitly authorized RPX to

represent Apple • $500k payment• Agreement related to post-grant challenges• Discussion about 3rd Party (New Bay) challenges to Virnetx patents• Apple’s demonstrated interest in challenging Virnetx patents

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Trade Associations (cont’d):Unified Patents v. Dragon Intellectual Property

IPR2014-01252 (Feb. 12, 2015)• Unified Patents:

– Companies sign up for “technology specific deterrence”;– Unified Patents then performs “NPE-deterrent activities”

including sometimes filing post-grant challenges• Held: Petition not barred (on available evidentiary record) for

failing to name members as RPIIs• Reasons:

– Even assuming Unified Patents does nothing other than file IPRs for its members, this does not demonstrate that any particular member paid for this IPR

– Different than RPX v. Virnetx, where RPX was paid money potentially tied to the proceeding and received suggestions

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Joint Defense Groups

• Trial Practice Guide (77 Fed. Reg. 48,760)

“[I]f Part A is part of a Joint Defense Group with Party B in a patent infringement suit, and Party B files a PGR petition, Party A is not a “real party-in-interest” or a “privy” for the purposes of the PGR petition based solely on its participation in that Group.”

“That is not to say that Party A’s membership in . . . the Joint Defense Group . . . Is irrelevant to the determination; deeper consideration of the facts in the particular case is necessary . . .”

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Joint Defense Groups (cont’d)

• JDG’s collective reference to “their” Petition in a district court motion to stay does not, by itself, demonstrate the requisite control by an RPII. – Chimei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR2013-00038

(March 21, 2013)

• Co-defendants are not necessarily RPIIs just because Petitioner uses the same expert as in litigation or because challenges in petition are similar to defendants’ invalidity contentions.– Brinkmann Corp. v. A&J Mfg., LLC, IPR2015-00056 (March 23, 2015)

• Assertion of common-interest privilege over communications with 3rd party does not, by itself, lead to RPI finding.– Petroleum GEO-Services Inc. v. Westerngeco LLC, IPR2014-00687 (Dec. 15,

2014)

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Supplier/Customer Relationships & Infringement Indemnification

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Customer/SupplierHP Co. v. MCM Portfolio, LLC, IPR2013-00217, Paper 10 & 19 (Sep. 10, 2013 & Oct. 10, 2013)

• Background:– HP resells accused products supplied by Pandigital– Pandigital was served with complaint more than 1 year

before HP's petition was filed• Holding: Petition not barred as untimely

– Accused products irrelevant to privity• "MCM bases its privity argument solely on its assertion that HP and

Pandigital are successive owners of the same allegedly infringing property. Prelim. Resp. 7 (citing Taylor v. Sturgell, 553 U.S. 880, 894 (2008)). We are not persuaded that this allegation alone is enough to confer privity for purposes of § 315(b). "

• "The allegedly infringing products referred to by MCM are not at issue in this proceeding. "

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Customer/Supplier (cont’d) BEA Sys Inf. v. Cheetah Omni, LLC, IPR2013-00175,

Paper 15 (July 3, 2013)• Background:

– BEA supplied US government with accused technology– US served in Court of Federal Claims on 4/22/2011– BEA served on 3/19/2012– BEA filed petition on 3/4/2013

• Holding: No bar– No privity between US and BEA, because "any privity stemming from

interests in BAE Systems’ allegedly infringing products does not apply to this patentability proceeding"

– "[PO] neither alleges nor presents sufficient and credible evidence that the United States exercises control over BAE Systems’ participation in this matter or that the United States is responsible for funding and directing the proceeding. "

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IndemnificationAtlanta Gas Light Co. v. Bennett Regulator Guards,

Inc., IPR2013-00453, Paper 31 (Jan 22, 2014)

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Complaint served 7/11/12


Added in amended complaintPetition filed 7/18/13


IPR2013-00453, Paper 31 (Jan 22, 2014)

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Supply agreement with indemnity clause

"MRMC is required to defend any infringementclaim against AGLR and its subsidiaries"

Supplier

Customer


IPR2013-00453, Paper 31 (Jan 22, 2014)

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Salient facts:•"Supplier" served first

•Customer filed IPR petition

•Indemnification had not been agreed upon at time of IPR filing

• Disputed application of the indemnity obligation in the supply agreement


IPR2013-00453, Paper 31 (Jan 22, 2014)• Real Party In Interest (312(a)):

– Board relies on declaration from petitioner that "MRMC has not indemnified AGLC - nor has it directed, controlled, or funded AGLC in connection with the [district court litigation] or this IPR proceeding"

– "Patent Owner provides insufficient evidence to support its speculative contention that any party other than Petitioner, in fact, is funding or controlling Petitioner’s involvement in this proceeding, or that the Petition was filed “at the behest” of any party other than Petitioner."

– "institution . . . is not barred . . .under these facts"

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IPR2013-00453, Paper 31 (Jan 22, 2014)

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• One year bar (315(b)):– PO argues that because of supply agreement, MRMC is privy of AGLC

and service on MRCG started the clock.– "Service upon [supplier], prior to service upon [petitioner/customer],

creates no clear obligation or opportunity for control of Petitioner by [supplier] in this proceeding"


IPR2013-00453, Paper 88 (Jan. 6, 2015)• BUT, this is not the end of the story as we will see later

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Indemnification (cont’d) Broadcom Corp. v. Ericsson, IPR2013-00601, Paper 23 & 66 (Jan. 24, 2014 & Mar. 6, 2015)

• Background:– Jury found Broadcom's customers liable for infringement– Broadcom thereafter filed IPR petition

• Holding: No privity, no unnamed RPII– "To show privity requires a showing that Broadcom would be bound to the

outcome of the Texas Litigation. To be bound, in normal situations, Broadcom must have had control over the Texas Litigation."

– "indemnity payments and minor participation in a trial are not sufficient to establish privity between the non-party manufacturer of the accused device and the defendant parties"

– "Control of the litigation, or some sort of representation, constitutes a 'crucial' factor. "

– "Paying for trial expenses pursuant to indemnity normally does not establish privity or control. "

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Indemnification (cont’d) GE Corp. v. Transdata, Inc. IPR2014-01559

Paper 23 (Apr. 15, 2015)• Background:

– OG&E served with complaint 9/21/2011– GE filed petition on 9/26/2011– GE agreed to indemnify OG&E, stating that GE "would 'direct and

control the litigation'" but would "solicit OG&E’s input and assent on all material decisions in the case "

• Holding: Petition barred under 315(b), not instituted– Opportunity to control prior litigation enough

• "the presence or absence of actual control is immaterial to the privity determination "

• "if Petitioner had the opportunity to exercise control over OG&E’s defense in the Oklahoma lawsuit, then it is in privity with OG&E with respect to that litigation "

• "courts have found privity where an entity’s control over the litigation was substantial, even though not complete "

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Indemnification (cont’d) First Data Corp. v. Cardsoft LLC. IPR2014-00715

Paper 9 (Oct. 17, 2014)• Background:

– VeriFone served with complaint in 2008 (2008 Litigation)– First Data served with complaint 5/2/2013 (2013 Litigation)– VeriFone indemnifying First Data in 2013 Litigation

• VeriFone can choose counsel to defend First Data• Same counsel in 2008 and 2013 Litigation

– VeriFone funded the IPR– VeriFone discussed with First Data what art to assert in IPR– FDR given exclusive control over IPR by agreement dated 4/28/2014– Petition filed 4/30/2014

• Holding: Petition barred under 315(b) and denied under 312(a)• VeriFone "has controlled and/or has had an opportunity to control" the petition• 4/28/2014 agreement came too late ("after all of the work has been done")

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Related Companies / Corporate "Blurring"

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Related CompaniesAtlanta Gas Light Co. v. Bennett Regulator Guards,

IPR2013-00453, Paper 88 (Jan. 6, 2015)

• "Rather than maintaining well-defined corporate boundaries, AGLR, Petitioner, and AGLS are so intertwined that it is difficult for both insiders and outsiders to determine precisely where one ends and another begins"

• "Although parent-subsidiary relationships are not among those expressly identified by the Supreme Court in the second Taylor factor, this factor weighs heavily in favor of finding AGLR to be a real party in interest in this proceeding."

38

Related CompaniesAtlanta Gas Light Co. v. Bennett Regulator Guards,

IPR2013-00453, Paper 88 (Jan. 6, 2015)

• "We conclude that at least AGLR is a real party in interest that Petitioner failed to identify in its Petition"

• Result: Petition terminated, institution vacated.

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Related Companies (cont’d) Zoll Lifecor v. Philips Elec., IPR2013-00609, Paper 15

(Mar. 20, 2014)• Background:

– Zoll Medical (Petitioner's parent) served with complaint in 2010– Petition filed more than 1 year after parent was served– "ZOLL Medical controls 100% of Petitioner and authorizes its budget and

plans. "– Parent and petitioner shared in-house counsel

• Holding: Petition barred under 315(b) and denied under 312(a)• "Petitioner’s actions have blurred sufficiently the lines of corporate separation with its

parent, ZOLL Medical, such that ZOLL Medical has had control, or could have controlled Petitioner, in all aspects of its business "

• "We are persuaded that the evidence presented by Patent Owner shows sufficiently that ZOLL Medical has exercised consistent control over Petitioner’s business since 2006. The relationship is one that has been very close with aligned interests and sufficient opportunities for ZOLL Medical to control all aspects of Petitioner’s business, including controlling this inter partes review. "

40

Related Companies (cont’d)Commerce Bancshares, Inc. v. IV II LLC, IPR2014-00801,

Paper 7 (Dec. 1, 2014)• Background:

– Compass Bank was named petitioner– BBVA Compass named as RPII– BBVA, S.A. (unnamed) owns and controls BBVA Compass– "BBVA serves as a source of strength and capital to BBVA Compass."

• Holding: Petition not barred• "Patent Owner’s evidence does not demonstrate sufficiently that

BBVA . . . exercised, or could have exercised, control over the filing of this Petition."

• "Patent Owner’s evidence does not demonstrate sufficiently that BBVA . . . funded, directed, and controlled the filing of this Petition"

41

Related Companies (cont’d)Galderma S.A. v. Allergan Industrie, SAS, IPR2014-

01422, Paper 14 (Mar. 5, 2015)• Background:

– Galderma SA and Q-Med AB named as petitioners and only RPII– Q-Med AB a wholly-owned subsidiary of Galderma SA– Galderma a wholly-owned sub of Nestle Skin Health and Nestle SA.– Q-Med manufactured products accused in District Court litigation– Products were distributed by another sub, Galderma Labs

42

Related CompaniesGalderma S.A. v. Allergan Industrie, SAS, IPR2014-

01422, Paper 14 (Mar. 5, 2015)• Holding: Petition is denied for failure to name RPII

– Board finds "pattern of intertwined control"– Concludes Nestle "operate[d] Galderma 'as the pharmaceutical arm of

Nestlé Skin Health S.A.'"– CEO of Galderma was also CEO and Board member of Nestlé Skin

Health S.A., whose "presence at the helm of both Galderma and its parent, Nestlé Skin Health S.A., strongly implies 'an involved and controlling parent corporation representing the unified interests of itself and Petitioner.'"

– "At a minimum, Petitioner’s failure to identify Nestlé Skin Health S.A. violates the statutory and regulatory requirements that the Petition identify all real parties-in-interest. 35 U.S.C. § 312(a)"

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Mergers & Acquisitions Activity

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M&A ActivitySynopsys, Inc. v. Mentor Graphics Corp., IPR2012-

00042, Paper 16 (Feb. 22, 2013)• (Facts discussed previously)• Holding: Petition is timely

– "any privity created by successive interests in EVE’s products, does not apply here."

– Relevant timing is the service of the complaint that triggered the bar date, well before Synopsis acquired EVE

• "Petitioner provides no persuasive evidence that at the time of service of the 2006 complaint Synopsis could have exercised control over EVE’s participation in the proceeding, or vice versa."

45

M&A ActivityChi Mei Innolux Corp. v. SEL Co, Ltd., IPR2013-00028,

Paper 14 (Mar. 21, 2013)• Background:

– CMO served with complaint in 2004– Petitioner formed from merger of CMO and other entities in March

2010– PO relied on petitioner's SEC filings “admitting that CMO and

[Petitioner] are the same party”

• Holding: Petition is timely– "[PO] does not show that [Petitioner] and [CMO] were the same entity when

the CMO case was filed in November of 2004"– "We find the SEC filings insufficient to show that the Chi Mei Optoelectronics

and [petitioner] are the same party"

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Same Counsel

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Same CounselRPX Corp. v. Virnetx, IPR2014-00171,

Paper 49 (June 5, 2014)• Background:

– Apple served with complaint August 2010– Apple (via Firm A) filed IPR on 6/12/2013, denied as time-barred – RPX subsequently filed its own petition, using different outside

counsel (Firm B).– Virnetx noticed that metadata embedded in petition showed author

of petition was attorney with Firm A (Apple's prior counsel)• [Ex. 1075 at 71:11-22]

– Discovery ensued

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Same CounselRPX Corp. v. Virnetx, IPR2014-00171,

Paper 49 (June 5, 2014)• Additional Facts Uncovered

– In October 2013, Apple paid RPX $500,000, inter alia to file IPRs, giving RPX "complete control" over the IPRs

– RPX requested Apple's consent to hire Apple's counsel that had prepared the previously-filed time-barred petitions; one month later, RPX filed new petitions

– "RPX does not dispute that Apple and RPX discussed 'VirnetX and the filing of IPRs with RPX,' or that RPX and Apple shared counsel and Apple’s expert. "

• Holding: Apple was unnamed RPII; therefore petition denied

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Discovery Related to RPI Issues

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Basic Discovery Concepts

• Discovery is less than what is normally available in district court litigation. See 37 C.F.R.§§42.51-53

• Party seeking “additional” discovery “must show that such additional discovery is in the interests of justice.” 37 C.F.R. § 42.51(b)(2)(i)– “good cause” standard in PGRs and CBMs. See C.F.R.§42.224

• Must be more than a “mere possibility” or “mere allegation that something useful [to the proceeding] will be found.”– Garmin Int’l, Inc. et al., v. Cuozzo Speed Technologies LLC, IPR2012-

00001 (Feb. 14, 2003) (consider Garmin factors)

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Discovery:Broadcom Corp. v. [] Ericsson

IPR 2013-00601, -602, -636 (Jan. 24, 2014)• Ericsson sought additional discovery regarding possible

privity between Broadcom and Defendants in a related litigation (“Texas Litigation”) and relied upon: – known indemnity agreements between Broadcom and some

defendants; – Broadcom’s amicus brief in the Texas Litigation; – SEC filings (describing indemnity);– communications with Acer, a Texas litigation;– Broadcom’s use of Ericsson’s litigation expert report in the IPR

petition; and– Other email correspondence about indemnity.

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Broadcom Corp. v. [] Ericsson

• Held: Discovery denied.– Indemnity payments and minor trial participation

are insufficient to establish privity– JDG agreement is insufficient to establish privity– Amicus brief only showed “potential future

control as a non-party over the appeal of an issue of damages.”

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54

• Shared Board of DirectorsPurus John’s Lone Star

President:Brandon Smith

President:Brandon Smith

Director:Charles Letchman

Director:Charles Letchman

Director:John Hoffman

Director:John Hoffman

CEO:John Hoffman

CEO:John Hoffman

CFO:Charles Letchman

CFO:Charles Letchman

Director:Frank Fenimore

Director:Frank Fenimore

“Partner”:Frank Fenimore, Sr.

“Partner”:Frank Fenimore, Sr.

• A Shared Business Address• Shared Lawyers

Discovery (cont’d):John’s Lone Star Distribution, Inc., v. Thermolife Int’l

IPR2014-01201 (May 13, 2015)

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• Discovery Granted as to:1. Non-redundant documents that describe:

1. the corporate structure; 2. duties and responsibilities of the President and Directors of Purus, as of

the Petition filing. 2. A list from Petitioner identifying persons who provided direction to, or had

the authority to provide direction to, Petitioner or its counsel in relation to this proceeding, including persons who reviewed, or were given the opportunity to review, papers filed in this proceeding.

3. Communications between Petitioner (or its counsel) and Purus (other than as between the shared board members) regarding the current proceeding.

• No Deposition:The Board did, however, note that Mr. Hoffman submitted a declaration that was subsequently struck because of his refusal to be deposed.

John’s Lone Star Distribution, Inc., v. Thermolife Int’l

Burden of Proof Issues

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RPI Burden of Proof Issues:Zerto, Inc. v. EMC Corp., IPR2014-01254

(March 3, 2015)• “We generally accept the petitioner’s identification of

real parties-in-interest at the time of filing the petition.”• This “acts as a rebuttable presumption that benefits the

petitioner.”• Where a “patent owner provides sufficient rebuttal

evidence that reasonably brings into question the accuracy of a petitioner’s identification of real parties-in-interest, the burden remains with the petitioner to establish that it ahs complied with the statutory requirement to identify all real parties-in-interest.”

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Timing of RPII/Privity Challenges

58

Timing77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012) cmt. 8

• Challenges to RPII "should be" brought before or with the patent owner preliminary response

• But, the Office did not say such a challenge "must" be brought with the preliminary response

59

Timing (cont’d)GEA Process Eng'g Inc. v. Steuben Foods, Inc., IPR2014-

00041, Paper 135 (Dec. 23. 2014)• Background:

– GEA filed petitions October 2013– IPRs instituted March 10, 2013– PO sought discovery related to RPII on March 31,2014, suggesting Procomac

might be unnamed RPII– Discovery was originally denied– PO reiterated its discovery request, which was granted.– Discovery revealed Procomac reimbursed GEA for its IPR expenses

• Holding: GEA failed to identify all RPII; trial terminated; institution decision vacated– "[312(a)] is clearly an ongoing requirement that must be complied with during

the pendency of the petition"– "Requiring such challenges muse be made before institution would be

prejudicial to patent owners as exemplified by the cases"

60

Timing (cont’d)Askeladden LLV v. iSourceloans, LLC., IPR2015-00129,

Paper 7 (Apr. 9, 2015)• Background:

– Petition filed 10/23/2014– PO did not file preliminary response (was due Feb 6, 2015)– On April 6, 2014, PO seeks leave to file motion to terminate for failure

to name all RPII– Institution decision deadline was May 6, 2015

• Holding: Request to file motion denied, merits not reached– Board "concerned with the timing of Patent Owner's request"– Insufficient time to receive Petitioner's opposition and consider before

May 6 institution deadline– "Should the Petition be granted and a trial instituted in any of these

cases, Patent Owner may ask the Board to reconsider its request by first requesting a call with the panel."

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