Takeaway: For the requirement that a petition identify all real parties-in-interest, the Board generally accepts a petitioner’s initial identification, but it is a rebuttable presumption. When a patent owner provides sufficient evidence that brings into question the accuracy of the identification, the burden remains with petitioner to establish that it has complied with the statutory requirement.
In its Decision, the Board did not institute review because the Petition was incomplete. After Patent Owner raised valid questions concerning the proper identification of each real party-in-interest, Petitioner did not attempt to rebut Patent Owner’s contentions and thus failed to meet its statutory burden. Given the timing, the Board further stated that the Petition could not be re-filed because the Petition would no longer fall within the one-year period specified by 35 U.S.C. § 315(b).
In the Preliminary Response, Patent Owner contended that the Petition failed to list all the real parties-in-interest as required by 35 U.S.C. § 312(a)(2). In response, the Board sought additional briefing from Petitioner directed to Patent Owner’s contention, but Petitioner did not respond to the Board’s request.
The statutory requirement that a petition identify all real parties-in-interest is a “threshold issue.” The Board generally accepts the petitioner’s identification of the real parties-in-interest at the time of filing the petition, but it is a “rebuttable presumption.” “When, as here, a patent owner provides sufficient rebuttal evidence that reasonably brings into question the accuracy of the petitioner’s identification of real parties-in-interest, the burden remains with the petitioner to establish that it has complied with the statutory requirement.” The determination of whether a party is a real party-in-interest is a “highly fact-dependent question.” The focus is on “the party’s relationship to the inter partes review . . . and the degree of control the party can exert over the proceedings.” See Aruze Gaming Macau Ltd. v. MGT Gaming Inc., Case IPR2014-01288, slip op. at 11 (PTAB Feb. 20, 2015) (Paper 13).
Here, the Petition identified only Amazon.com and Amazon Web Services, Inc. (“AWS”) as real parties-in-interest, but Patent Owner contended that the Petition “fails to identify all real parties-in-interest because Amazon.com and AWS have no direct relationship, but instead, Amazon.com controls AWS only through ADS and AWSHC.” In support, Patent Owner cited Amazon.com’s SEC Form 10-K report and form, as well as Petitioner’s Fed. R. Civ. P. 7.1 Disclosure of Corporation Interest Certificate filed in the related district court proceeding. The Board found that Patent Owner “provides sufficient evidence that reasonably brings into question the accuracy of Petitioner’s identification of the real parties-in-interest.” The Board explained:
While the existence of a parent-subsidiary relationship alone may not be sufficient to establish a parent’s status as a real party-in-interest, in this case the close corporate relationship between Amazon.com and AWS strongly suggests that ADS and AWSHC, the subsidiary companies in the chain of corporate ownership between Amazon.com and AWS, are involved and controlling corporations representing the unified interests themselves and Petitioner.
Because Petitioner was given the opportunity to rebut Patent Owner’s evidence and meet its burden, but chose not to, the Board determined that, based on the record before it, “Petitioner has not sufficiently demonstrated that the Petition complies with the statutory requirement to identify all real parties-in-interest.” Accordingly, the Petition was denied.
Amazon.com, Inc. v. Appistry, Inc., IPR2015-00480
Paper 18: Decision Denying Institution of Inter Partes Review
Dated: July 13, 2015
Patent: 8,200,746 B2
Before: David C. McKone, James A. Tartal, and Jo-Anne M. Kokoski
Written by: Kokoski
Related proceedings: Appistry, Inc. v. Amazon.com, Inc., C.A. No. 2:15-cv-00311 (W.D. Wash.)