In Cisco Systems v. Hewlett Packard Enterprise Company, IPR2017-01933, Paper 9 (PTAB 2018) (Decision Denying Institution of Review), the Patent Trial and Appeal Board (“the Board”) held that a merger between Cisco and another company called Springboard that was completed after Cisco filed a petition for inter partes review (IPR) created a real party in interest relationship, and subsequently denied institution of the IPR.

On September 15, 2015, Hewlett Packard (HP) served Springpath with a complaint for patent infringement. On September 14, 2016, one day before the statutory deadline set forth in 35 U.S.C. § 315(b), Springpath filed a petition for IPR.

Cisco Systems filed a petition for IPR against HP on August 11, 2017, after Springpath had already filed for IPR. Subsequently, Cisco announced its intent to acquire Springpath on August 21, 2017, and completed the acquisition of Springpath on September 22, 2017, more than one month after Cisco’s petition had been filed.

The Board found that Springpath was a real party in interest, and that Cisco was merely acting as a proxy for Springpath. The PTAB then denied institution of the IPR for the following reasons. First, Cisco never disclosed the ongoing merger with Springpath in its petition or via updated mandatory disclosures. Although the merger was not yet complete at the time Cisco’s petition was filed, the Board found that Cisco should have advised the Board of the ongoing acquisition as well as the completion of the acquisition.

Second, the Board also found that Cisco could not provide any specific reasons why Cisco wanted to file for IPR independently of Springpath. Although Cisco stated that it filed the petition “for its own reasons,” the Board found this argument to be conclusory and unpersuasive. Also, since Cisco was not a party to the district court litigation, Cisco had no clear reason to file for IPR. Thus the Board concluded that Cisco was merely acting as a proxy for Springpath, which was barred under §315(b) from filing for IPR.

Cisco Systems v. Hewlett Packard Enterprise Company departs from previous Board decisions in two ways. First, prior Board decisions have heavily relied on the control factor to determine who is or is not a real party in interest. The control factor asks the question: does the party alleged to be a real party in interest have control over the petitioner, for the purpose of the IPR? In Cisco Systems, the petitioner was Cisco, a large publically-traded company, and the alleged real party in interest was Springpath, a much smaller company that Cisco acquired for $320 million. Presumably, Springpath was not exercising any control over Cisco. Instead, the Board’s decision hinged on whether Cisco was acting as a proxy for Springpath, regardless of the level of control Springpath had over Cisco.

Secondly, the Board’s decision in Cisco Systems might be construed as being inconsistent with the Board’s prior case of Synopsys v. Mentor Graphics Corp, IPR2012-00042, Paper 60 (PTAB 2014). In Synopsys, the Board held that it is “only privity relationships up until the time a petition is filed that matter; any later-acquired privies are irrelevant.” Paper 60 at 12.

In Synopsys v. Mentor, the patent owner Mentor Graphics had previously settled a patent infringement lawsuit with a company called EVE in 2006. Id. at 11-16. The petitioner Synopsys filed a petition on September 26, 2012, and subsequently Synopsys entered into an agreement to acquire EVE on September 27, 2012, one day after the petition was filed. Id. at 11-16. The Board held that the petition was not barred because there was neither a real party in interest relationship nor a privity relationship between Synopsys and EVE at the time the petition was filed, citing to 37 C.F.R. § 42.101(b). Id. at 11-16.

Accordingly, if the holding from Synopsys had been applied to the case of Cisco Systems, the result in Cisco Systems might have been quite different, because Cisco’s merger with Springpath was completed after Cisco filed a petition for IPR.

However, in Synopsys, Synopsys had an ongoing patent licensing dispute with Mentor Graphics prior to filing the IPR, and Synopsys therefore had a clear reason to file the IPR before acquiring EVE. See Mentor Graphics Corp. v. EVE-USA, 851 F.3d 1275, 1280-81 (Fed. Cir. 2017). In contrast, in Cisco Systems, Cisco could not explain why it had filed the IPR, and therefore the Board seemed to infer that Cisco’s reason for filing the IPR was to act as a proxy for Springpath, thus indicating that the real party in interest was Springpath, not Cisco.