Takeaway: If patent owner provides sufficient evidence in its preliminary response to present a question of unnamed real parties-in-interest, the Board may allow the petitioner to respond to the allegations in a reply to the preliminary response. 

In its Order, the Board authorized Petitioner to file a reply to Patent Owner’s Preliminary Response to address a real party-in-interest issue.  Petitioner named Askeladden LLC as its real party-in-interest.  In the Patent Owner’s Preliminary Response, Patent Owner stated that The Clearing House is also a real party-in-interest and is comprised of various financial institutions that are real parties-in-interest.  Patent Owner relied on a press release, an article, and webpages to argue that Askeladden and The Clearing House are the same company.  Patent Owner also provided evidence that the two companies shared management-level employees.

The Board reviewed the exhibits and determined that Patent Owner had sufficiently shown that there is a valid question as to whether The Clearing House exercised or could have exercised control over the proceedings.  Therefore, the Board authorized Petitioner to file a reply to the Patent Owner’s Preliminary Response to address the issue, and highlighted that Petitioner may want to provide evidence showing the events that led up to the filing of the petitions, such as funding, who decided to file the petitions, and whether any party other than Askeladden controlled, or could have controlled, the petitions in any respect.  The Board also gave Petitioner the option of foregoing the reply and filing an updated notice listing other real parties-in-interest if Petitioner determined other real parties-in-interest exist.

Askeladden LLC v. Sean I. McGhie and Brian Buchheit, IPR2015-00122; IPR2015-00123; IPR2015-00124; IPR2015-00125; IPR2015-00133; IPR2015-00137
Paper 16: Order on Conduct of the Proceeding
Dated: February 17, 2015
Patent Nos. 8,532,063; 8,540,152; 8,297,502
Before: Sally C. Medley, Joni Y. Chang, and Georgianna W. Braden
Written by: Medley