Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2017-01917, Paper 86
Respondent filed a motion to terminate an IPR proceeding, arguing that Petitioners’ updated real-party-in-interest disclosures—after institution—require a new filing date, which places the petition outside the one year period. The PTAB denied Petitioners’ motion. The PTAB explained that the requirements set forth in 35 U.S.C 312 are not jurisdictional and “a lapse in those requirements does not deprive the Board of jurisdiction over the proceeding, or preclude the Board from permitting such lapse to be rectified.” Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. at 5 (PTAB Mar. 4, 2016)(Paper 38)(precedential) and Blue Coat Sys., Inc. v. Finjan, Inc., Case IPR2016-01444, slip op. at 10 (PTAB July 18, 2017)(Paper 11).
The PTAB identified various factors it considers in determining whether a petitioner may amend its identification of RPIs while maintaining the original filing date: whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner. Aerospace Communications Holdings Co. v. Armor All/Step Products Co., Case IPR2016-00441, slip op. at 3 (PTAB June 28, 2016)(Paper 12).
- There was no dispute that, at the time of filing of the Petition, none of the later named RPIs was subject to the § 315(b) bar, i.e., served with a complaint more than a year before the filing date of the petition (RPIs would not have been time-barred)
- Because RPIs would not have been time-barred, the PTAB has authority to consider the updated Mandatory Notices without giving the Petition a new filing date
- Petitioner did not attempt to circumvent the § 315(b) bar or estoppel rules
- This issue was heavily disputed and Petitioner prevailed preliminarily in the Institution Decision (Petitioner’s arguments were not made in bad faith or meritless—the cost to litigate the dispute is not sufficient prejudice warranting termination)
- By designating this opinion as precedential, the PTAB made clear that real parties-in-interest (RPIs) can be added to Mandatory Notices post IPR institution.
- Update RPI disclosure post institution: The Board my accept updated Mandatory Notices under 312(a) as long as the petition would not have been time-barred under 315(b) if it had included the RPI (if a petition is not filed within a year of when a RPI of petitioner is served with a complaint, it is time-barred by 315(b)).
- Factors considered to determine whether amendment of Mandatory Notices to add RPIs is warranted:
- 315(b) bar or estoppel: at time of filing the petition, none of the added RPI were subject to the 315(b) bar.
- Prejudice to Patent Owner: (1) The cost of having to litigate a good faith dispute does not warrant termination; (2) alleged prejudice in another forum (e.g., district court) is not determinative; (3) Board will not speculate as to Patent Owner’s allegations of prejudice.
- Bad faith: Patent Owner must provide specific allegations of fact that demonstrate bad faith.
- Gamesmanship: (1) updating Mandatory Notices without conceding that party is, in fact, a RPI, does not constitute gamesmanship; (2) the PTAB will not speculate as to what the district court might do in response to updated Mandatory Notices.