Lumentum Holdings, Inc. v. Capella Photonics, Inc.

When a patent owner argues that a petition failed to satisfy 35 U.S.C. § 312(a)(2) because the real party in interest changed after filing, the Board will treat § 312(a) ("may be considered only if") as a nonjurisdictional claim-processing rule. A lapse in complying with § 312(a) therefore does not deprive the Board of jurisdiction over the proceeding or preclude the Board from permitting the lapse to be rectified, and termination is not warranted. Where the petition identified all real parties in interest when filed, a later change is handled by updating the mandatory notice under 37 C.F.R. § 42.8(a)(3), which allows 21 days, and late filing may be excused under 37 C.F.R. § 42.5(c)(3). No prior precedent directly addressed this issue; the Board followed its own non-precedential decision in Elekta, Inc. v. Varian Medical Systems, Inc., IPR2015-01401 (Paper 19), and rejected the argument that Elekta was not controlling because it was not precedential. For a petitioner, a corporate reorganization or other change in the real party in interest after filing, even before institution, does not strip the Board of jurisdiction. The petitioner can cure by updating the mandatory notice and moving to re-caption, and the Board may accept a late notice. For a patent owner, a motion to terminate based on a post-filing RPI change fails unless it shows § 312(a) is jurisdictional. Objections should also be raised promptly, since the Board noted the owner waited over four months. The Board relied on Supreme Court authority (Sebelius v. Auburn Reg'l Med. Ctr., 133 S. Ct. 817 (2013); Henderson ex rel. Henderson v. Shinseki, 562 U.S. 428 (2011)) and Achates Reference Publ'g, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015). LEGAL TEST OR STANDARD: Following Elekta, the Board applied the Supreme Court bright line for classifying a statutory limitation as jurisdictional: it turns on whether Congress has clearly stated that the rule is jurisdictional; absent a clear statement, courts treat the restriction as nonjurisdictional. Section 312(a)'s emphatic 'may be considered only if' language is not such a clear statement, and its petition requirements are claim-processing rules. The movant bears the burden of proof under 37 C.F.R. § 42.21(c). TRIGGERING FACTS: The petition was filed February 14, 2015 naming JDSU as petitioner and real party in interest. JDSU was renamed Viavi and assets were spun out to the Lumentum entities in July and August 2015. Institution issued August 25, 2015, and an updated mandatory notice was filed September 15, 2015, outside the 21 days of 37 C.F.R. § 42.8(a)(3). The Board accepted it late on January 15, 2016 under 37 C.F.R. § 42.5(c)(3) and granted re-captioning without opposition. The patent owner conceded it had no evidence disputing the RPI identification and did not object for over four months. There was no dispute that the petition identified all RPIs when filed. KEY QUOTE: "Simply stated, § 312(a) sets forth requirements that must be satisfied for the Board to give consideration to a petition, however, a lapse in compliance with those requirements does not deprive the Board of jurisdiction over the proceeding, or preclude the Board from permitting such lapse to be rectified." (Paper 38, p. 5) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed and agreed with Elekta, Inc. v. Varian Medical Systems, Inc., IPR2015-01401, slip op. 6-7 (December 31, 2015) (Paper 19), and cited Achates Reference Publ'g, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015). PRACTICE TIP: Petitioners should file an updated mandatory notice within 21 days of any RPI change under 37 C.F.R. § 42.8(a)(3), or promptly seek leave for late filing under 37 C.F.R. § 42.5(c)(3), and move to re-caption. Patent owners should not frame § 312(a)(2) RPI challenges as jurisdictional and should raise any RPI objection immediately.