Takeaway: The statutory requirements under 35 U.S.C. § 312(a) for consideration of a petition are not jurisdictional. Therefore, the Board can allow a petitioner to rectify a lapse in compliance without terminating the proceedings.

In its Decision, the Board denied Patent Owner’s Motion to Terminate the Proceeding based upon lack of jurisdiction of the Board to institute inter partes review.

The Petition was filed on February 14, 2015 and identified JDS Uniphase Corporation (“JDSU”) as the petitioner and real party-in-interest. During summer 2015, JDSU was renamed Viavi Solutions Inc. (“Viavi”), and certain assets and obligations associated with communications and commercial optical products were spun out to Lumentum Holdings Inc., Lumentum, Inc., and Lumentum Operations LLC (“the Lumentum entities”). On August 25, 2015 a decision instituting trial was entered. On September 15, 2015, Petitioner filed an updated mandatory notice listing the Lumentum entities as real parties-in-interest. The notice was not filed within 21 days of the change in name of the real parties-in-interest as required by 37 C.F.R. § 42.8(a)(3).

Patent Owner contended that Petitioner did not meet its statutory requirements under 35 U.S.C. § 312(a)(2), therefore, the Petition was incomplete when review was instituted. The Board found that Patent Owner has not shown that § 312(a) is jurisdictional, citing Elekta, Inc. v. Varian Medical Systems, Inc., IPR2015-01401 (PTAB Dec. 31, 2015) (Paper 19). The Board stated that a lapse in compliance with § 312(a) does not deprive the Board of jurisdiction over the proceeding or preclude the Board from permitting such lapse to be rectified.

Patent Owner argued that Eleckta is “distinguishable” because the Board was able to consider the new real party-in-interest before it instituted review, and also the Elekta is not controlling and inconsistent with other Board cases. However, the Board noted that Patent Owner did not cite to any decisions finding § 312(a) jurisdictional.

Lumentum Holdings, Inc., Lumentum, Inc., and Lumentum Operations LLc v. Capella Photonics, Inc., IPR2015-00739

Paper 38: Decision on Motion to Terminate

Dated: March 4, 2016

Patent RE42,678 E

Before: Josiah C. Cocks, Kalyan K. Desphande, and James A. Tartal

Written by: Tartal