Entered: January 24, 2013
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`INTELLECTUAL VENTURES MANAGEMENT, LLC
`Petitioner
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`v.
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`Patents of XILINX, INC.
`Patent OWNER
`_______________
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`Cases IPR2012-00018 (Patent 7,566,960)
`IPR2012-00019 (Patent 8,062,968)
`IPR2012-00020 (Patent 8,058,897) and
`IPR2012-00023 (Patent 7,994,609)1
`_______________
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`Before SALLY C. MEDLEY, KARL D. EASTHOM, and JUSTIN T.
`ARBES, Administrative Patent Judges.
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`MEDLEY, Administrative Patent Judge.
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`DECISION
`Real Party in Interest
`37 C.F.R. § 42.8
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`1 This decision addresses an issue that is identical in all four cases.
`Therefore, we exercise discretion to issue one opinion to be filed in each of
`the four cases. The parties, however, are not authorized to use this style
`heading in subsequent papers since doing so may cause confusion.
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`

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`INTRODUCTION
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`Intellectual Ventures Management, LLC (IVM) filed four separate petitions
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`to institute inter partes reviews of U.S. Patent 7,566,960, U.S. Patent 8,062,968,
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`U.S. Patent 8,058,897 and U.S. Patent 7,994,609. Each of the four patents is the
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`subject of a separate proceeding.2 The Patent Owner of all four patents is Xilinx,
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`Inc. In each proceeding, Xilinx, Inc. filed a preliminary response, making an
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`identical argument; that IVM’s petitions should be denied or dismissed because
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`each fails to identify all of the real parties in interest. (See, e.g., IPR2012-00018,
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`Paper 10 at 5-9). This decision addresses Xilinx’s real party in interest argument
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`by which we are not persuaded.3,4
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`ANALYSIS
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`As part of its petition submission, Petitioner identifies Intellectual Ventures
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`Management, LLC as the real party in interest. (Paper 3). In its patent owner
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`preliminary response, Xilinx argues that IVM’s petition should be denied or
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`dismissed because it fails to identify all of the real parties in interest as required by
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`37 C.F.R. § 42.8(b)(1). (Paper 10 at 5-9).
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`A petition for inter partes review may be considered only if, among other
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`requirements, the petition identifies all real parties in interest. 35 U.S.C. §
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`2
` As the style heading indicates, U.S. Patent 7,566,960 is the subject of IPR2012-
`00018, U.S. Patent 8,062,968 is the subject of IPR2012-00019, U.S. Patent
`8,058,897 is the subject of IPR2012-00020 and U.S. Patent 7,994,609 is the subject
`of IPR2012-00023.
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` 3
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` No other decision is made herein on the other issues raised in the corresponding
`petitions or patent owner preliminary responses for the four inter partes
`proceedings. Rather, those issues will be addressed in separate, forthcoming,
`decisions.
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` 4
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` For the purpose of clarity and expediency, IPR2012-00018 is representative and
`all citations are to IPR2012-00018 unless otherwise noted.
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`

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`312(a)(2). The Trial Practice Guide provides guidance regarding factors to
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`consider in determining whether a party is a real party in interest. Considerations
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`may include whether a non-party exercises control over a petitioner’s participation
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`in a proceeding. Other considerations may include whether a non-party is funding
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`the proceeding or directing the proceeding. 77 Fed. Reg. 157 (August 14, 2012)
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`48759-60.
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`Xilinx directs attention to Exhibit 2005 as evidence that IVM is not the only
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`real party in interest in the proceeding. (Paper 10 at 8). Exhibit 2005 is a copy of a
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`certificate of interested entities or persons pursuant to Civil Local Rule 3-16 of the
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`Northern District of California and Federal Rule of Civil Procedure 7.1, filed by
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`six defendants (one of which is IVM) in an unrelated district court proceeding.5
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`Exhibit 2005 identifies 63 entities purportedly (i) having a financial interest in the
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`subject matter in controversy or in a party to the proceeding, or (ii) having a non-
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`financial interest in that subject matter or in a party that could be substantially
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`affected by the outcome of the proceeding. (Ex. 2005 at 2).
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`Xilinx has not sufficiently shown the relevance of Exhibit 2005 to the facts
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`of this case. Xilinx has not demonstrated that the considerations of whether a non-
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`party is a real party in interest for an inter partes review proceeding are the same or
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`even similar to those considerations or requirements of Civil Local Rule 3-16 and
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`Federal Rule of Civil Procedure 7.1. For example, Federal Rule of Civil Procedure
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`7.1 requires, among other things, that a nongovernmental corporate party, in a civil
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`action, file a disclosure statement that identifies any parent corporation and any
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`publicly held corporation owning 10% or more of its stock. Fed. R. Civ. P. 7.1(a).
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`5 Xilinx, Inc. v. Invention Investment Fund I LP, et al., N.D. Cal. Case No. 5:11-cv-
`00671-SI. The case is not listed by either IVM or Xilinx as a related matter to the
`proceeding before us. (Paper 3 at 1 and Paper 9 at 1).
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` Civil Local Rule 3-16 for the Northern District of California, requires a party to
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`file a certificate of entities (i) having a financial interest in the subject matter in
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`controversy or in a party to the proceeding, or (ii) having a non-financial interest in
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`that subject matter or in a party that could be substantially affected by the outcome
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`of the proceeding. Xilinx has not shown how the above requirements are the same
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`or even similar in kind to the factors to consider outlined in the Trial Practice
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`Guide regarding real parties in interest in proceedings such as the one before us.
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`No analysis in that regard has been made.
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`Moreover, the subject matter and issues in the district court case are different
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`than the subject matter and issues of the four inter partes review proceedings.
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`(Exhibit 3001).6 The Board will not assume, as Xilinx seems to suggest, that the
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`63 listed entities (which includes Xilinx itself) and five other “similarly named”
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`defendants in the district court proceeding should be named as real parties in
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`interest for Petitioner. (Paper 10 at 8-9). Xilinx has not shown any basis for even
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`one of the 63 entities being a real party in interest in the four proceedings. It
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`would be speculative for the Board to attempt to sort it out without something
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`more. IVM has disclosed their real party in interest. Xilinx challenges that
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`disclosure and as such must come forward with sufficient evidence to demonstrate
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`that IVM’s disclosure is inadequate. That Xilinx has failed to do.
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`For all of these reasons, Xilinx has failed to sufficiently demonstrate that
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`IVM has not named all real parties in interest for any of the four proceedings.
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`6 Ex. 3001 at 3-32. Exhibit 3001 is a copy of the complaint which has been
`entered into the electronic record.
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`

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`Petitioner:
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`Michael Specht
`Lori Gordon
`Robert Sterne
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`MSPECHT@skgf.com
`LGORDON@skgf.com
`RSTERNE@skgf.com
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`Patent Owner:
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`David L. McCombs
`David O’Dell
`Thomas B. King
`HAYNES and BOONE, LLP
`david.mccombs@haynesboone.com
`david.odell@haynesboone.com
`thomas.king@haynesboone.com