Takeaway: A party claiming to have all substantial rights to a challenged patent must set forth evidence to support its assertion for the Board to consider papers filed by the party.

In its Order, the Board ordered that the Preliminary Response filed by Fluidigm will be expunged unless within five business days of the Board’s Order, a paper is filed “that shows cause why Fluidigm should be entitled to file a preliminary response to the Petitions.”

Petitions were filed challenging the ’503 patent and the ’539 patent. The Petitions and the challenged patents “identify the California Institute of Technology (“Patent Owner”) as the patent owner and assignee, respectively.” Petitioner served its Petitions on counsel indicated by the correspondence address of record for the challenged patents. However, in a footnote in each Petition, Petitioner stated that according to the prosecution history, Fluidigm Corp. is identified as an exclusive licensee.

Fluidigm filed a Mandatory Notice and Preliminary Response in each proceeding representing that it has all substantial rights to the challenged patents and is therefore the real party in interest. However, the Board noted, Fluidigm provided no evidence in support of its assertion.

The Board stated that it is only the patent owner, and not a licensee, who has the right to file a preliminary response. Citing to Federal Circuit case law, the Board stated that an exclusive licensee may have standing to sue for infringement in situations where it has all substantial rights in the patent and is the “effective patentee.” However, in the instant proceeding, no evidence was provided to support the assertion that Fluidigm has the right to file a preliminary response. Therefore, the Board stated that it does not have a basis upon which to consider the papers filed by Fluidigm and ordered that the Preliminary Responses be expunged unless a paper were filed within five business days showing cause why Fluidigm should be entitled to file the Preliminary Responses.

Bio-Rad Laboratories, Inc. v. California Institute of Technology, IPR2015-00009, IPR2015-00010
Paper 9 (IPR2015-00009), Paper 8 (IPR2015-00010): Order on Conduct of the Proceeding
Dated: March 6, 2015
Patents: 7,294,503 B2; 8,252,539 B2
Before: Grace Karaffa Obermann, Donna M. Praiss, and Kristina M. Kalan
Written by: Praiss