Takeaway: The relevant date for determining whether a non-party is a real party-in-interest is the filing date of the petition.

In its Decision, the Board denied Patent Owner’s Motion to Terminate for failure to identify Southwire Company, LLC (“Southwire”) as a real party-in-interest. The Board stated that the issue is whether Patent Owner has rebutted the presumption that Southwire was not a real party-in-interest at the time the Petition was filed.

The issue revolves around the relationship between Petitioner entity Coleman Cable, LLC (“Coleman”) and Southwire, Coleman’s current parent corporation entity, who was not listed as a real party-in-interest in the Petition. Patent Owner served a complaint on Coleman Cable, Inc. on July 3, 2013. In December 2013, Southwire and Coleman Cable, Inc. signed an “Agreement and Plan of Merger” wherein Southwire purchased 100% of the outstanding stock of Coleman, Inc. The merger certificate was filed on February 11. 2014. On March 5, 2014, Coleman Cable, Inc. was reorganized into Coleman Cable, LLC, with Southwire as its sole member. On June 11, 2014, Coleman, along with several other entities, filed a Petition. Coleman’s share of payments for the IPRs came from Coleman accounts, separate from Southwire’s accounts.

Pursuant to 35 U.S.C. § 312(a)(2), a petition for inter partes review can only be considered if it identifies all real parties-in-interest. There is a rebuttable presumption that a petitioner’s identification of real parties-in-interest is accurate. However, if a patent owner provides sufficient rebuttal evidence, the ultimate burden of proof remains with petitioner to establish that it has identified all real parties-in-interest.   Whether a party is a real party-in-interest is highly fact dependent, and multiple factors inform the analysis, such as the relationship with the petitioner and the relationship to the petition itself, including the degree of involvement in the filing.

The Board determined that Southwire was not a real party-in-interest to the proceeding at the time of the filing of the Petition. The Board noted that there is no evidence that Southwire has been accused of infringing the patent at issue; therefore, while its subsidiary may desire review of the patent, there is no evidence that Southwire also desires review. Also, there was only evidence of Coleman contributing funds to the proceeding, not Southwire. The Board was not persuaded by the fact that the address on Coleman’s checks is the same as Southwire’s address because that fact does not speak to the authority to issue the payments or the entity making the payments. The Board also noted that the corporate structure does not require a finding that Southwire is a real party-in-interest because while it shows control generally, it does not show control regarding this particular proceeding. The Board also stated that while Southwire and Coleman share the same officers, Patent Owner did not provide evidence to persuade the Board that the officers had the ability to, or did, blur the lines between their respective roles in their organizations. Lastly, Petitioner conceded that Southwire may have become a real party-in-interest on July 6, 2015, but the Board found that the relevant inquiry is whether Southwire was a real party-in-interest as of the filing date of the Petition.

Jiawei Technology (HK) Ltd., Jiawei Technology (USA) Ltd., Shenzhen Jiawei Photovoltaic Lightning Co., Ltd., Atico International (Asia) Ltd., Atico International USA ,Inc., Chien Luen Industries Co., Ltd., Inc., (Chien Luen Florida), Chien Luen Industries Co., Ltd., Inc. (Chien Luen China), Coleman Cable, LLC, Nature’s Mark, Rite Aid Corp, Smart Solar, Inc., and Test Rite Products Corp. v. Simon Nicolas Richmond, IPR2014-00935; IPR2014-00936; IPR2014-00938

Paper 52/56/57: Decision Denying Patent Owner’s Motion to Terminate

Dated: August 21, 2015

Patent Nos. 8,089,370 B2; 7,196,477 B2; 7,429,827 B2

Before: William V. Saindon, Justin T. Arbes, and Barry L. Grossman

Written by: Saindon