Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 39
`Entered: March 2, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`LUMENTUM HOLDINGS, INC., LUMENTUM, INC., and
`LUMENTUM OPERATIONS LLC,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00731
`Patent RE42,368 E
`____________
`
`
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Motion to Terminate
`37 C.F.R. § 42.71(a)
`
`
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`

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`IPR2015-00731
`Patent RE42,368 E
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`Patent Owner Capella Photonics, Inc. was authorized to file a motion
`to terminate “limited only to Patent Owner’s contention that the Board
`lacked jurisdiction to institute inter partes review in this proceeding.” Paper
`32, 5. Patent Owner filed a Motion to Terminate, and, as the moving party,
`it has the burden of proof to establish that it is entitled to the requested relief,
`here, termination of the proceeding. Paper 36 (“Motion” or “Mot.”), see
`also 37 C.F.R. § 42.21(c). Upon consideration of Patent Owner’s
`arguments, for the reasons discussed below, the Motion is denied.
`As we have explained previously in this case:
`
`By way of background, the Petition was filed on February
`13, 2015, and identified JDS Uniphase Corporation (“JDSU”) as
`the real party-in-interest. Paper 1, 1. During late July and early
`August, 2015, as part of a reorganization JDSU was renamed
`Viavi Solutions Inc. (“Viavi”). Additionally, certain assets and
`obligations associated with communications and commercial
`optical products were spun out to Lumentum Holdings Inc.,
`Lumentum, Inc. and Lumentum Operations LLC. Paper 22, 1–
`5; Ex. 1037 (stating that pursuant to a series of agreements
`entered July 31, 2015, Viavi transferred certain business
`segments to Lumentum Holdings Inc. pursuant to a distribution
`effective August 1, 2016.)
`On August 25, 2015, a decision instituting trial in this
`proceeding was entered. [Paper 8.] On September 15, 2015, an
`updated mandatory notice was filed stating that as a result of a
`reorganization involving JDSU, the real parties-in-interest to this
`proceeding are now Lumentum Holdings Inc., Lumentum, Inc.
`and Lumentum Operations LLC. [Paper 11.] Petitioner’s
`updated mandatory notice was not filed within 21 days of the
`change in name of the real parties-in-interest, as required by
`37 C.F.R. §42.8(a)(3). On January 15, 2016, we conducted a
`teleconference with the parties in response to a request by
`Petitioner to re-caption the proceeding to reflect the change in
`name of the real parties-in-interest. During that call we
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`authorized Petitioner to file a motion to re-caption the
`proceeding, and accepted Petitioner’s late-filing of the updated
`mandatory notice. See 37 C.F.R. §42.5(c)(3). On January 22,
`2016, Petitioner filed a Motion to Re-Caption the Proceeding (the
`“Motion”). Paper 22. Patent Owner did not oppose the Motion.
`The Motion was granted on January 29, 2016. Paper 28. During
`the teleconference on February 2, 2016, Patent Owner conceded
`that it has no evidence to dispute the identification of the real
`parties-in-interest provided by Petitioner.
`Paper 32, 2–3.
`Patent Owner contends that “Petitioner failed to meet its statutory
`requirements under § 312(a)(2) and that the petition was incomplete,” and
`reasons that “[s]ince the Board should not have considered the petition when
`it instituted review, this proceeding should be terminated.” Mot. 1. We
`disagree.
`The statutory provision at issue, 35 U.S.C. § 312(a), states:
`A petition filed under section 311 may be considered only
`
`if-
`
`(1) the petition is accompanied by payment of the fee
`established by the Director under section 311;
`(2) the petition identifies all real parties in interest;
`(3) the petition identifies, in writing and with particularity,
`each claim challenged, the grounds on which the challenge to
`each claim is based, and the evidence that supports the grounds
`for the challenge to each claim, including-
`(A) copies of patents and printed publications that
`the petitioner relies upon in support of the petition; and
`(B) affidavits or declarations of supporting evidence
`and opinions, if the petitioner relies on expert opinions;
`(4) the petition provides such other information as the
`Director may require by regulation; and
`(5) the petitioner provides copies of any of the documents
`required under paragraphs (2), (3), and (4) to the patent owner
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`or, if applicable, the designated representative of the patent
`owner.
`Contrary to Patent Owner’s argument that under § 312(a)(2) the Board
`lacked jurisdiction to institute inter partes review in this proceeding, Patent
`Owner has not shown that § 312(a) is jurisdictional. In Elekta, Inc. v.
`Varian Medical Systems, Inc., IPR2015-01401, slip op. 5–8, (December 31,
`2015) (Paper 19) (“Elekta”), the decision explained, and we agree, that:
`The [Supreme] Court has “adopted a readily administrable bright
`line for determining whether to classify a statutory limitation as
`jurisdictional.” Sebelius [v. Auburn Reg’l Med. Ctr.], 133 S. Ct.
`[817,] 824 [(2013)] (internal quotation marks omitted). That
`determination turns on “whether Congress has clearly stated that
`the rule is jurisdictional; absent such a clear statement, . . . courts
`should treat the restriction as nonjurisdictional in character.” Id.
`(internal quotation marks and alteration omitted). Section
`312(a)’s emphatic “may be considered only if” language does not
`make those requirements jurisdictional. See Henderson [ex rel.
`Henderson v. Shinseki], 562 U.S. [428,] [] 439 [(2011)] (“[W]e
`have rejected the notion that all mandatory prescriptions,
`however emphatic, are properly typed jurisdictional.”) (internal
`quotation marks and alterations omitted, emphasis added).
`Because Congress has not clearly stated that it is jurisdictional,
`we treat § 312(a) as nonjurisdictional in character. In particular,
`§ 312(a)’s “Requirements of the Petition” are “[a]mong the types
`of rules that should not be described as jurisdictional” because
`they are “‘claim-processing rules’ . . . that seek to promote the
`orderly progress of litigation by requiring that the parties take
`certain procedural steps at certain specified times.” Henderson,
`562 U.S. at 435; see id. at 438 (holding that a statutory notice of
`appeal deadline required “[i]n order to obtain review by the Court
`of Appeals for Veterans Claims” was not jurisdictional); see also
`Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652, 658
`(Fed. Cir. 2015) (holding that the § 315(b) time-bar does not
`implicate the Board’s jurisdiction because the time bar “does not
`itself give the Board the power to invalidate a patent”).
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`Simply stated, § 312(a) sets forth requirements that must be satisfied
`for the Board to give consideration to a petition, however, a lapse in
`compliance with those requirements does not deprive the Board of
`jurisdiction over the proceeding, or preclude the Board from permitting such
`lapse to be rectified. Applying Patent Owner’s contrary logic that § 312(a)
`is jurisdictional would lead to absurd results. For example, if § 312(a) were
`jurisdictional, a patent owner could show at the conclusion of trial that a
`petitioner failed to attach to the petition a copy of a patent “relied upon in
`support of the petition,” as required by § 312(a)(3)(A), and we would have
`no choice but to terminate the proceeding. Such a result contrary to the
`interests of justice weighs heavily against Patent Owner’s contention that
`§ 312(a) is jurisdictional.
`
`The Board’s rules further make clear that jurisdiction is not “lost” the
`moment a petition no longer identifies “all real parties in interest,” as
`required by § 312(a)(2), because it is apparent readily that over the course of
`a trial the identity of a real party in interest may change. Accordingly,
`37 C.F.R. §42.8(a)(3) allows a party 21 days to provide the Board notice of a
`change in its identification of the real parties-in-interest, without the loss of
`“jurisdiction” over the proceeding.
`Patent Owner provides no argument in its Motion to undermine the
`determination in Elekta, with which we agree, that § 312(a) is not
`jurisdictional. Patent Owner contends that Elekta is “distinguishable”
`because in that case the “Board was able to consider the new RPI listed in
`the mandatory notice before it instituted review,” is “not controlling” (as it is
`not a precedential decision), and “is inconsistent with many other Board
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`cases that treat § 312(a) as a threshold issue.” Mot. 8–10. None of these
`arguments demonstrate that § 312(a) is jurisdictional, the very premise upon
`which Patent Owner’s Motion is founded. Patent Owner directs us to no
`decision finding § 312(a) is jurisdictional, and simply stating that an issue is
`a “threshold” issue does not make it “jurisdictional,” nor does the timing of
`the institution decision. Thus, having failed to demonstrate that § 312(a) is
`jurisdictional, Patent Owner has not shown it is entitled to the relief
`requested.
`Patent Owner’s additional arguments generally fall outside the scope
`of what was authorized for the Motion, but do not otherwise support Patent
`Owner’s request that the proceeding be terminated. Mot. 1–13. Patent
`Owner’s argument that the Petition was incomplete is not correct. Id. at 1–5.
`There is no dispute that the Petition, when filed, identified all real parties in
`interest, and, therefore, the Petition was complete, was properly accorded a
`filing date, and was available to be “considered” under 35 U.S.C. § 312(a) .
`Accordingly, Patent Owner’s argument that the Petition cannot be
`“corrected” under 37 C.F.R. § 42.106(b) is misplaced as there was no need
`to “correct” the Petition (as opposed to updating the Petition with additional
`information concerning circumstances that arose after the Petition was filed).
`Accordingly Patent Owner has not shown a need to assign a new filing date
`to the Petition. Id. at 3–4.
`Fundamentally, Patent Owner seeks to create an obligation on
`Petitioner to notify the Board of any change in the identity of a real party in
`interest before the Board issues an institution decision, notwithstanding that
`Petitioner does not know the date such a decision will be issued, and in
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`disregard of our rule which provides 21 days to provide such notice. See id.
`at 6–8; see also 37 C.F.R. §42.5(c)(3) (providing the Board discretion to
`permit late-filing of the updated mandatory notice). Patent Owner has
`shown no sufficient support for imposing such an obligation, much less a
`jurisdictional requirement that would compel us to do so.
`Similarly, Patent Owner’s contention that the Board is offering
`Petitioner “a fully furnished opportunity for gamesmanship” has no merit.
`See Mot. 11. Petitioner disclosed on September 15, 2015, the new name of
`the real party in interest following the corporate reorganization. Patent
`Owner raised no issue with that disclosure for over four months, waiting
`until after we granted Petitioner’s motion to re-caption the case, without
`opposition from Patent Owner, on January 29, 2016. We have considered
`all of Patent Owner’s arguments and conclude that Patent Owner has failed
`to make the necessary showing that it is entitled to the extraordinary relief it
`seeks of termination of this proceeding.
`Accordingly, it is:
`ORDERED that Patent Owner’s Motion to Terminate is denied.
`
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`For Petitioner:
`
`Walter Linder
`FAEGRE BAKER DANIELS LLP
`patentdocketing@faegrebd.com
`
`For Patent Owner:
`
`Jason Eisenberg
`Robert Sterne
`Jon Wright
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`Jasone-ptab@skgf.com
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`
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