Takeaway: The Board may look to findings in other proceedings to determine the ownership of the patent.

In its Final Written Decision, the Board granted Patent Owner’s request for adverse judgment of the challenged claims (14, 17, 31, and 33) of the ’431 Patent.

Petitioners Continental Automotive GmbH, Kia Motors Corporation, and Kia Motors America, Inc. (collectively, Continental) filed a Petition for inter parties review. The Petition named as patent owners “Netlach LLC, Peter F. Wingard, The Bankruptcy Estate of Peter F. Wingard, and/or The Wingard Co.,” and indicated that Netlach, LLC is the assignee in the assignment most recently filed with the U.S. Patent and Trademark Office, but that ownership of the ’431 Patent has been contested in litigation. Following institution, Continental requested a teleconference with the Board, and represented that the Bankruptcy Court had recently decided the ownership of the ’431 Patent and that the patent had been assigned to Continental. Patent Owner responded that the assignment to Netlach had not been reversed. The Board then held a conference call and requested the parties to brief the issue of ownership.

The named inventor of the ’431 Patent is Peter F. Wingard, who filed for Chapter 7 bankruptcy. Prior to filing for bankruptcy, he purportedly assigned the ’431 Patent to the Wingard Company and at some point thereafter, the Wingard Company purportedly assigned the patent back to Mr. Wingard, who then purportedly assigned the patent to Netlach. Mr. Wingard was unable to produce the assignment to the Wingard Company at the Bankruptcy Court. In August 2015, the Bankruptcy Trustee filed a motion in the Bankruptcy Court for authorization to sell the ’431 Patent, and Netlach filed an objection to that. A hearing was conducted and the Bankruptcy Court found that at the time of the bankruptcy filing, the ’431 Patent was owned by Mr. Wingard, therefore, the Trustee could sell the patent. The Trustee assigned it to Continental.

The Board found that in light of the Bankruptcy Court’s ruling and the sale of the patent, it would recognize Continental as the current owner of the ’431 Patent for purposes of theinter partes review. Continental then requested an adverse judgment, and the Board entered an order of adverse judgment.

Continental Automotive GmbH, Kia Motors Corporation, and Kia Motors America, Inc. v. Netlach, LLC, IPR2015-00481

Paper 22: Judgment and Final Written Decision

Dated: March 8, 2016

Patent 5,531,431

Before: Ken B. Barrett, James P. Calve, and Bart A. Gerstenblith

Written by: Barrett