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Takeaway:

The statutory provision that sets forth the requirement to identify all real parties-in-interest in an IPR petition, 35 U.S.C. §312(a)(2), is not jurisdictional in nature. Failing to comply with this requirement thus does not deprive the Board of jurisdiction to hear a case.

Summary  (Precedential) :

JDS Uniphase Corporation (“JDSU”) filed a petition against Patent Owner Capella Photonics, Inc., naming itself as the real party-in-interest (“RPI”). After filing the petition, JDSUspun off assets and obligations to Lumentum Holdings Inc., Lumentum, Inc., and Lumentum Operations LLC. The decision to institute a trial was entered approximately one month later. Approximately three weeks later, Petitioner filed an updated mandatory notice to properly identify Lumentum Holdings Inc., Lumentum, Inc., and Lumentum Operations LLC as the RPI’s. The updated notice, filed 45 days after the name change, was not filed within the 21-day period required by 37 C.F.R. §42.8(a)(3), but the Board accepted the late filing.

Patent Owner contends that Petitioner’s failure to timely identify the RPI’s constituted a failure to comply with 35 U.S.C. §312(a) which states that a petition “may be considered only if” certain requirements are satisfied including the identification of all real parties-in-interest. Accordingly, the Patent Owner contended that the Board lacked jurisdiction to institute the IPR and filed a Motion to Terminate the proceeding.

The Board denied the Motion, holding that §312(a) is not jurisdictional in character. The Board relied upon Elekta, Inc. v. Varian Medical Systems, Inc. (IPR2015-01401, slip op. 6–7), which held that whether a statutory limitation is jurisdictional depends on whether Congress has clearly declared it to be so. Absent such an unambiguous statement, the statutory restriction should be considered non-jurisdictional. With respect to §312(a), Congress provided no indication that it should be treated as jurisdictional in character. Instead, the requirements enumerated under §312(a) are merely intended to facilitate claim processing and procedural efficiency. Initial failure to comply with the requirements of §312(a) does not divest the Board of jurisdiction to hear a case, nor does it preclude the Board from allowing such a lapse to be rectified.

The Board further noted the “absurd results” that would follow application of Patent Owner’s interpretation of §312(a), such as the termination of proceedings at the end of trial simply because the petitioner failed to attach a copy of a relied-upon patent to the original petition. By contrast, the Board’s decision recognizes the practical reality that the names of real parties-in-interest may routinely change over the course of trial.