Takeaway: A petitioner seeking to correct a petition must actively and affirmatively seek the Board’s authorization to do so, rather than merely suggesting that correction would be appropriate.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision to dismiss the Petition in each of IPR2014-00440, IPR2014-00441, and IPR2014-00736.  The Board had dismissed the Petition in each of these proceedings because it had found that each Petition had failed to name all of the real parties-in-interest.

The Board’s Decision was based on its determination that all “three Petitions should have identified Petitioner’s parent company, Corning Incorporated (‘Corning Inc.’), and Petitioner’s sister company, Corning Optical Communications LLC (‘Corning NC’), as RPIs.”  Because the Board had found that “the Petitions failed to identify all RPIs as required by 35 U.S.C. § 312(a)(2), [the Board had] granted Patent Owner’s Motions to Dismiss[,] vacated [its] Decisions to Institute[,] and terminated the reviews.”

Petitioner’s Request for Rehearing asserted that the Board’s Decision had committed legal error (with respect to the applicable standards and burden), had misrepresented or overlooked evidence (e.g., relating to the delay by Patent Owner in raising the issue), and had erred in not allowing Petitioner to correct the Petitions to identify all RPIs without loss of original filing date (which would have avoided application of the time-bar under 35 U.S.C. § 315(b)).

As for the issue of applicable standards, Petitioner had argued that the Board had committed legal error by “failing to follow ‘standards’ presented by a different panel in Jiawei Technology (HK) Ltd. et al. v. Simon Nicholas Richmond, Case IPR2014-00935 (PTAB Aug. 21, 2015)[,]” which was a case in which the Board reached “opposite results” as compared to those arrived at in the instant proceeding.  The Board was not persuaded by this argument, instead concluding that the Jiawei case was distinguishable due to different facts and circumstances.

Regarding the issue of burden, the Board concluded that “once [Patent Owner] came forward with sufficient evidence indicating that Petitioner should have identified Corning Inc. and Corning NC as RPIs[,] a ‘shifting burden’” came into play, i.e., a ‘burden of production’ on Petitioner.”  This led the Board to conclude that it had not impermissibly placed the burden of persuasion on Petitioner.

The Board then conducted a detailed analysis regarding how the instant proceeding was being “funded.”  Petitioner had contended that it “funds” its outside counsel’s invoices at the time the invoices are inputted into an accounting system, after which outside counsel’s invoices were paid.  The Board was not persuaded by Petitioner’s attempt in this respect to show that it was responsible for payments relating to the instant proceeding.  Instead, the Board found that while Petitioner had improperly focused on the “reimbursement” and “payment” aspects of the Board’s analysis, the Board’s finding was not limited to subsequent reimbursement.

According to the Board, Petitioner had not sufficiently shown that Petitioner had “actually reimbursed or otherwise paid Corning Inc. in relation to the IPRs in question.”  Thus, the Board was persuaded that “outside counsel [had] billed Corning Inc. (not Petitioner) in relation to these proceedings, [and] that Corning Inc. paid those bills.”

As for Petitioner’s contentions regarding correction of its Petitions, “Petitioner had [argued] that, in the interests of justice, [the Board] should permit [Petitioner] to amend its Petitions, and maintain original Petition filing dates, in view of the asserted errors and misapprehension of evidence[.]”  But the Board instead noted that “Petitioner did not request authorization to correct its Petitions in these cases, even after [the Board] authorized Patent Owner to file a Motion to Dismiss during trial in an Order dated March 27, 2015[.]”  Thus, according to the Board, “[a]t best, and only after institution of trial, Petitioner has suggested that correction of the Petition is a potential remedy—without actively and affirmatively seeking authorization to make such a correction and while simultaneously resisting acknowledging that [Corning Inc. or Corning NC] is a real party in interest.”  This led the Board to conclude that Petitioner, had “failed to take the necessary steps to put the merits of its position squarely before [the Board].”

Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00440; IPR2014-00441; IPR2014-00736
Paper 68: Decision Denying Petitioner’s Request for Rehearing
Dated: December 9, 2015
Patents: 8,597,041 B2; 8,562,366 B2; 6,676,446 B2
Before:  Jameson Lee, Josiah C. Cocks, and Jacqueline Wright Bonilla
Written by: Bonilla