Corning Optical Comm’s RF, LLC v. PPC Broadband, Inc.

Addressing the requirement to disclose the real parties-in-interest (RPI) for an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) denied the petitioner’s request for rehearing regarding the dismissal of three IPRs due to the petitioner’s failure to list its parent and sister companies as real parties-in-interest. Corning Optical Comm’s RF, LLC v. PPC Broadband, Inc., IPR2014-00440, -00441, -00736 (PTAB, Dec. 9, 2015) (Bonilla, APJ.).

Petitioner Corning Optical filed three IPRs against the patent owner, PPC Broadband. In those petitions, the petitioner failed to list its parent and sister companies as real parties-in-interest. The patent owner did not initially raise the issue, and the IPRs were instituted. After the close of discovery the patent owner moved for (and was granted) additional discovery regarding whether the parent and sister company of the petitioner should have been listed as RPIs. After discovery, the patent owner moved to dismiss the IPRs. In its opposition, the petitioner maintained that the unnamed companies were not RPIs and argued that a failure to name all RPIs did not necessitate dismissal and, in any event, did not require rescinding the filing dates of the petitions. Although the petitioner’s opposition suggested that “even if the Board finds that a non-named party is an RPI, Petitioner should be permitted to amend its Petition and retain its filing date,” it never formally moved for such leave. The Board granted the patent owner’s motion, dismissed the IPRs, and vacated its Decisions to Institute.

The petitioner filed a Request for Rehearing, alleging that the Board abused its discretion by granting the motion to dismiss. In support of its request, the petitioner argued that the Board committed legal error in assigning the burden of proof, misapprehended evidence relating the RPI inquiry and ought to permit the petitioner to amend its petitions in the interest of justice. The Board was not persuaded. With respect to the burden of proof, the Board explained that, although the ultimate burden of proof was with the patent owner, once the patent owner came forward with sufficient evidence regarding the RPI issue, the petitioner had an opportunity to “produc[e] additional evidence and present [. . .] persuasive argument based on new evidence or evidence already of record” in its opposition. With respect to the merits of the evidence, the Board concluded that it had properly considered all the evidence raised in the petitioner’s Opposition to the Motion to Dismiss and continued to find it unpersuasive. As for the interest of justice, the Board noted that the petitioner’s continued failure to move for leave to correct its petitions, even after all of the facts regarding RPI were in the record, suggested that the petitioner made a strategic decision not to correct the RPI. Even in the absence of any evidence of bad faith, the Board concluded that this was an error of law on petitioner’s part that properly mandated dismissal under the Board’s relevant decisions and § 312(a)(2).