Paper 26
`Date: June 15, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`____________
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`ORDER
`Permitting the Addition of Real Parties-In-Interest
`37 CFR § 42.5
`
`
`
`
`Date: June 15, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`____________
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`ORDER
`Permitting the Addition of Real Parties-In-Interest
`37 CFR § 42.5
`
`
`
`
`
`IPR2015-005632
`Patent 8,727,773 B2
`
`
`
`
`
`1. Introduction
`Petitioner, US Endodontics, LLC (“US Endo” or “Petitioner”), filed a
`
`“Petitioner’s Motion For Leave to Add Two Real Parties-In-Interest.” Paper 15
`(“Motion” or “Mot.”). Patent Owner, Gold Standard Instruments, LLC (“GSI” or
`“Patent Owner”) filed a “Patent Owner’s Opposition to Petitioner’s Motion for
`Leave to Add Two Real Parties In Interest.” Paper 25 (“Opposition” or “Opp.”)1
`
`In its Motion, US Endo “requests leave to identify two additional real
`parties-in-interest (“RPIs”)––Guidance Endodontics, LLC (“Guidance”) and Edge
`Endo, LLC “Edge Endo”–– [as real parties-in-interest].” Mot. 1. US Endo also
`“requests that the Board maintain US Endo’s original January 30, 2015 filing
`date.” Id. US Endo represents, however, that “US Endo’s request would not
`implicate any of the considerations under 35 U.S.C. § 315(b) or (e), even if it is
`assigned a new filing date.” Id.
`
`In its Opposition, GSI “requests that the Board deny Petitioner’s Motion for
`Leave to Add Two Real Parties in Interest (Paper 15) to its Petition for Inter Partes
`Review of Patent 8,727,773, and dismiss its Petition.” Opp. 1. Alternatively, GSI
`requests that “in the event that the Board does grant Petitioner’s motion, then,
`under Rule 42.106(a), the Petition and Patent Owner’s Preliminary Response both
`should be accorded a new filing date that is the same date that the identification is
`corrected.” Id. at 10.2
`For the reasons set forth below, we grant US Endo’s Motion to the extent
`
`that it may add Guidance and Edge Endo as real parties-in-interest.
`
`
`1 We authorized the filing of the Motion and Opposition. Paper 10.
`2 In making its alternative request, GSI cites to Askeladden LLC v. McGhie, IPR
`2015-00122, slip op. at 2 (PTAB Mar. 16, 2015) (Paper 34).
`2
`
`
`
`
`IPR2015-005632
`Patent 8,727,773 B2
`
`
`
`
`
`2. Discussion
`By statute, a petition filed under § 311 “may only be considered” if the
`
`petition “identifies all real parties in interest.” 35 U.S.C. § 312. By rule, a petition
`will not be accorded a filing date until the petition satisfies various requirements,
`including identifying all real parties-in-interest. 37 C.F.R §§ 42.106, 42.104, and
`42.8(b)(1). Thus, to be eligible for consideration, and to be accorded a filing date,
`a petition must identify all the real parties-in-interest. With such requirement in
`mind, given the circumstances presented in this proceeding, it seemingly would not
`be an appropriate course of action to permit belated designation of additional real
`parties-in-interest that could have been designated before, while yet also
`maintaining the filing date initially accorded to the Petition.
`
`We are mindful that our rules provide for the following:
`A motion may be filed that seeks to correct a clerical or typographical
`mistake in the petition. The grant of such a motion does not change
`the filing date of the petition.
`
`37 C.F.R. § 42.104(c).
`
`Here, however, it is clear that any mistake in the designation of the real
`parties-in-interest made with respect to the Petition in this proceeding did not arise
`due to a “clerical or typographical error.” Indeed, that is clear from the content of
`US Endo’s motion, itself, which requests leave to name additional real parties-in-
`interest, yet also “disputes” that such naming is necessary. Mot. 1. That show of
`reluctance, at this stage, discounts the existence of a clerical or typographical error.
`Thus, US Endo’s professed “dispute[],” and its representation that “it is willing to
`concede the issue” (Mot. 1), coupled with its proffered Motion as a whole, conveys
`that US Endo’s request to add real parties-in-interest did not arise due to a
`typographical or clerical error.
`
`3
`
`
`
`
`IPR2015-005632
`Patent 8,727,773 B2
`
`
`
`We construe our rules to “secure the just, speedy, and inexpensive resolution
`
`of every proceeding.” 37 C.F.R. § 42.1(b). Although GSI primarily seeks
`dismissal of the Petition in its Opposition, the circumstances presented here convey
`that such dismissal would frustrate the pursuit of a just, speedy, and inexpensive
`resolution to this proceeding. In that respect, as represented by US Endo, there is,
`presently, no statutory bar arising under 35 U.S.C. § 315(b) or (e), which would
`preclude US Endo from simply filing a new Petition adding real parties-in-interest.
`See Mot. 1. In such circumstance, the panel would be faced with the same
`consideration of the merits of the Petition only at some future date. The parties
`also would remain at their current posture only temporally offset, and having
`incurred additional expense. The facts involved in this proceeding with respect to
`the real party-in-interest issue do not establish an appropriate backdrop to dismiss
`the Petition.
`
`We may excuse late action “upon a Board decision that consideration of the
`merits would be in the interests of justice.” 37 C.F.R. § 42.5(c)(3). In considering
`the interests of justice, we provide US Endo the opportunity to add Guidance and
`Edge Endo as real parties-in-interest in connection with the Petition by filing
`updated Mandatory Notices. Should US Endo file updated Mandatory Notices
`designating those additional real parties-in-interest, the filing date accorded the
`Petition will be vacated, and a new filing date will be accorded. See Askeladden
`LLC v. McGhie, IPR 2015-00122, slip op. at 2 (PTAB Mar. 16, 2015) (Paper 34).
`As requested by GSI, in that circumstance, GSI’s “Patent Owner’s Preliminary
`Response” (Paper 9) will also be treated as if filed on the same date as the new
`filing date accorded the Petition. See id.; Opp. 10.
`
`4
`
`
`
`
`
`
`IPR2015-005632
`Patent 8,727,773 B2
`
`
`
`3. Order
`
`
`
`Accordingly, it is
`
`ORDERED that the portion of US Endo’s Motion seeking to add two real
`
`parties-in-interest is granted to the extent that US Endo is permitted to update its
`Mandatory Notices pursuant 37 C.F.R. § 42.8(b)(1) to identify Guidance and Edge
`Endo as real parties-in-interest;
`
`FURTHER ORDERED that if updated Mandatory Notices are filed
`identifying Guidance and Edge Endo as real parties-in-interest, the filing date
`accorded the Petition and the Preliminary Response will be vacated, and a new
`filing date will be accorded to each;
`
`FURTHER ORDERED that updated Mandatory Notices filed in accordance
`with this Order will be considered corrections to the Petition; and
`
`FURTHER ORDERED that US Endo is not required to resubmit the
`information contained in the original Petition filings.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`
`
`
`
`
`IPR2015-005632
`Patent 8,727,773 B2
`
`For PETITIONER:
`
`Jeffrey Ginsberg
`Matthew Berkowitz
`Eric Schreiber
`KENYON & KENYON LLP
`jginsberg@kenyon.com
`mberkowitz@kenyon.com
`eschreiber@kenyon.com
`
`For PATENT OWNER:
`
`Joseph Hynds
`Randy Brenner-Leifer
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`jhynds@rfem.com
`Ebrenner@rothwellfigg.com
`
`
`
`6
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
