Curium US LLC v. Universität Heidelberg

Informative decision only: persuasive authority, not binding precedent. When a petitioner, after filing, updates its mandatory notice before institution to identify additional real parties in interest, the Director will accord the Petition a new filing date, namely the date of the updated notice, because under Corning Optical "any Petition corrected to disclose additional RPIs must be given a new filing date." Where the new filing date does not implicate a time-bar under 35 U.S.C. § 315(b), the proceeding is not terminated, and the prior discretionary denial briefing and preliminary response are expunged and deadlines reset. The decision applies the precedential Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015), and cites Yangtze Memory Techs. Co. v. Micron Tech., Inc., IPR2025-00098, Paper 38 (Director January 15, 2026) (informative), and it shows that a corrected RPI disclosure need not end the case when no § 315(b) bar arises. For petitioners, a pre-institution updated mandatory notice can cure a challenged RPI omission, even without conceding the added entities are RPIs, but the filing date moves to the notice date, so the time-bar risk must be checked first. For patent owners, an RPI challenge can win a reset of the schedule and expungement of the earlier briefing, but not necessarily denial, and the owner must redo its preliminary response and discretionary denial arguments. The Board relied on 35 U.S.C. § 312(a)(2), 37 C.F.R. § 42.8 and 37 C.F.R. § 42.106(b); the text cites no Federal Circuit or Supreme Court authority. LEGAL TEST OR STANDARD: Under 35 U.S.C. § 312(a)(2), the Board may consider a petition for inter partes review "only if . . . the petition identifies all real parties in interest." Under Corning Optical, "any Petition corrected to disclose additional RPIs must be given a new filing date." The Director also asked whether the new date implicates a time-bar under 35 U.S.C. § 315(b) requiring termination, and whether the updated notice appears to name all RPIs. TRIGGERING FACTS: Petitioner filed the Petition on September 26, 2025, naming only itself as RPI. Patent Owner argued in its discretionary denial request that parent companies should have been listed. Petitioner filed an updated mandatory notice on January 5, 2026, naming Curium US Holdings LLC and Curium Netherlands BV, to moot the issue and without agreeing they were RPIs. No § 315(b) time-bar was implicated by the new date. KEY QUOTE: "Petitioner’s amendment of its RPI disclosures results in according the Petition a new filing date." (Paper 11, p. 3) PRIOR PRECEDENT AFFECTED: Follows and applies Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) (designated precedential by Director's Memorandum dated October 28, 2025), distinguishing it because there the new date implicated a § 315(b) time-bar. Also cites Yangtze Memory Techs. Co. v. Micron Tech., Inc., IPR2025-00098, Paper 38 at 8 (Director January 15, 2026) (informative). PRACTICE TIP: If an RPI challenge has any traction, file an updated mandatory notice before institution, after confirming that the new filing date, the date of that notice, does not trigger a § 315(b) bar. Expect the earlier discretionary denial and preliminary response papers to be expunged and the schedule restarted.