Corning Optical Communications RF, LLC v. PPC Broadband, Inc.

When a petition for inter partes review fails to identify all real parties in interest, the Board cannot consider it, because 35 U.S.C. § 312(a)(2) permits consideration "only if . . . the petition identifies all real parties in interest." The Board may dismiss the petition, vacate institution and terminate the review even after institution, and a petition corrected to name the omitted RPIs receives a new filing date, which here would make it time-barred under 35 U.S.C. § 315(b). An unnamed entity is an RPI under a fact-dependent inquiry if it funded the proceeding or exercised or could have exercised control over the petitioner's participation, including where the petitioner has blurred the lines of corporate separation. No prior precedent designated in this listing is named by the text. The decision applies and consolidates earlier panel decisions (Atlanta Gas, GEA, Medtronic, Reflectix, Zoll) holding that failure to name all RPIs warrants termination and a new filing date on correction. For petitioners, naming only the corporate petitioner is dangerous when a parent or sister company pays the fees, supplies in-house counsel, or shares officers: omission can end an instituted review, and the time bar can make the loss permanent. For patent owners, the decision confirms that an RPI motion can succeed after institution if it was timely and supported by evidence, but the patent owner then carries the burden by a preponderance of the evidence (that burden section, § II.E.1, is excluded from the precedential designation). The Board relied on Taylor v. Sturgell, 533 U.S. 880 (2008), for the RPI factors, and it cited In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015) only in reciting Petitioner's § 314(d) argument, which it rejected by pointing to other Board decisions. LEGAL TEST OR STANDARD: RPI status is "a highly fact-dependent question" with no bright-line test, drawing on Taylor v. Sturgell. A common consideration is "whether the non-party exercised or could have exercised control over a party's participation in a proceeding." Other considerations: whether the non-party "funds and directs and controls" the petition or proceeding; its relationship with the petitioner; its relationship to the petition, including the nature and/or degree of involvement in the filing; and the nature of the entity filing. The Board may also ask whether the petitioner blurred the lines of corporate separation so the entity could have controlled the filing and participation, and whether a pre-existing substantive legal relationship exists. Mere association in an unrelated endeavor, or being the ultimate parent, is not enough by itself. The Board treated the movant's burden as a preponderance of the evidence under 37 C.F.R. §§ 42.20(a), (c), 42.1(d) (the § II.E.1 burden discussion is outside the precedential designation). TRIGGERING FACTS: The sister company Corning NC shared officers with Petitioner (the same person was President of both, and the same person was Secretary of both), managed the same product line, was referred to interchangeably with Petitioner, and had its officers and Corning Inc. IP counsel directing outside counsel and joining settlement talks. The parent Corning Inc. hired outside counsel through its in-house IP counsel, received the invoices and made the initial payments through its shared services group, and its IP attorneys directed counsel and took part in settlement talks. Timeliness: the motion came after institution, but interrogatory responses dated February 19, 2015 in a related ITC case acted as a triggering event, and Patent Owner moved quickly afterward. A new filing date would fall more than one year after service of the infringement complaints, so correction would bar the petitions under 35 U.S.C. § 315(b). KEY QUOTE: "Under 35 U.S.C. § 312(a)(2) an IPR petition may be considered “only” if it identifies “all” real parties-in-interest." (Paper 68, p. 25) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Case IPR2013-00453 (PTAB Jan. 6, 2015) (Paper 88); GEA Process Eng'g. Inc. v. Steuben Foods, Inc., Case IPR2014-00041 (PTAB Feb. 11, 2015) (Paper 140); Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., Case IPR2014-00488 (PTAB May 22, 2015) (Paper 61); Reflectix, Inc. v. Promethean Insulation Tech. LLC, Case IPR2015-00039 (PTAB April 24, 2015) (Paper 18); and Zoll Lifecor Corp. v. Philips Elec. N. Am. Corp., Case IPR2013-00606 (PTAB Mar. 20, 2014) (Paper 13). PRACTICE TIP: Before filing, investigate and document who funds, directs, controls or shares officers and in-house counsel with the petitioner, including parents and affiliates, and name every entity that could qualify as an RPI. Do not rely on the petitioner's corporate form or on affiliates' counsel being nominally engaged for the petitioner. Patent owners should raise RPI challenges promptly after a triggering discovery and be ready to prove the point by a preponderance of the evidence if the motion comes after institution.