The issue regarding properly naming all real parties in interest in an IPR petition has been raised quite a number of times before the Board. In most cases, a patent owner raised the issue because at the time the IPR petition was filed, an entity who the patent owner alleged was a real party in interest was outside the one year statutory window for filing the petition. Thus, the patent owner sought to either have the petition denied, or an instituted trial terminated. See 35 U.S.C. § 315(b) (“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”). A hot topic is what happens if the party you leave out or incorrectly identify would not have been time barred at the time of the filing of the IPR. Can you correct the petition to add or change the party? The answer is yes – but you will lose your filing date, which may mean that your petition is now time barred as a result of a new filing date.
In Petroleum Geo-Services Inc. v. Westerngeco LLC, the Board held that failing to list a real party in interest would result in “the petition filed in that particular IPR [to] be considered an incomplete petition.” See IPR2014-00689, No. 22, Order (Aug. 12, 2014). The Board explained that an incomplete petition is not entitled to receive a filing date. Id.However, the “deficiency will be considered corrected upon the filing of the updated mandatory notice and a new filing date will be set as of the date the updated mandatory notice is filed.” Id. at 6. In this case, the petitioner simply filed an updated mandatory notice, and received a later filing date. The later filing date did not implicate the one year statutory bar, and thus, did not substantively alter the petitioner’s position (besides delaying the proceeding by six weeks).
In four currently pending cases, the misidentification of real parties in interest may result in the petitions being denied as time barred, even though none of the actual real parties in interest would have been time barred at the time the petitions were filed. See IPR2014-01203,01204,01206,01208 (P.T.A.B. Jul. 25, 2014). On the day before their one year statutory bar date, a number of entities together filed four IPR petitions against patents owned by Magna Electronics, Inc. In the petitions, the petitioners identified a number of real parties in interest, including “Valeo, Inc.” However, more than seven months prior to the petitions were filed, “Valeo, Inc.” ceased to exist as a result of corporate restructuring (a merger and name change). Valeo Inc.’s successor in interest, “Valeo North America, Inc.” was not named as a real party in interest in the petitions. After Magna raised the issue with the Board, the Board authorized briefing on the issue, and the petitioners filed updated Mandatory Notices to correct the identification of the real parties in interest. IPR2014-01203, No. 7 Order (P.T.A.B. Nov. 13, 2014). According to their brief, petitioners did not learn of the name change until recently, and then promptly updated their mandatory notices. IPR2014-01203, No. 10 Petitioners Brief (P.T.A.B. Nov. 18, 2014). Petitioners contend the change in the named real parties in interest does not prejudice the patent owner or cause the petitions to be fatally defective “as all real parties in interest known to the Petitioners were properly identified at the time the petitions were filed.” Id. at 2. Moreover, any error was minor “because the current entities are legal successors to their original entities.” Id. In arguing that the petitioners should lose their filing dates, Magna, in its responsive brief, argued that prejudice is irrelevant, and in any event, “[n]either [patent owner] nor the public should face an IPR filing by a non-existent party.” IPR2014-01203, No. 12 (P.T.A.B. Dec. 2, 2014). If the Board finds that the petitions were indeed “incomplete,” and the petitioners lose their original filing dates, a seemingly harmless mistake in identifying real parties in interest will have severe repercussions for Valeo.
The moral of the Valeo story is two-fold. First, be careful that you list all real parties in interest in your petition for inter partes review. Second, consider filing your IPR petition sooner rather than later. In the event a mistake is made in the identification of all real parties in interest, you may still have time to address it before your one year statutory bar date.