Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 40
`Entered: December 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RUBICON COMMUNICATIONS, LP,
`Petitioner,
`
`v.
`
`LEGO A/S,
`Patent Owner.
`
`
`Case IPR2016-01187
`Patent 8,894,066 B2
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`DECISION
`GRANTING MOTION TO CORRECT RPI
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 40
`Entered: December 16, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RUBICON COMMUNICATIONS, LP,
`Petitioner,
`
`v.
`
`LEGO A/S,
`Patent Owner.
`
`
`Case IPR2016-01187
`Patent 8,894,066 B2
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`DECISION
`GRANTING MOTION TO CORRECT RPI
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2016-01187
`Patent 8,894,066 B2
`I. Background
`On June 10, 2016, Petitioner filed a Petition requesting an inter partes
`review of claims 1–8 of U.S. Patent No. 8,894,066 B2. Paper 1 (“Petition”
`or “Pet.”). On November 28, pursuant to our authorization, Petitioner filed a
`Motion to Correct Clerical Mistake Under 37 C.F.R. § 42.104(c). Paper 30
`(“Motion” or “Mot.”). Patent Owner filed an Opposition to Petitioner’s
`Motion to Correct Clerical Mistake Under C.F.R. § 42.104(c). Paper 33
`(“Opposition” or “Opp.”).
`The Motion seeks to file a corrected petition that lists Smallworks,
`LLC as a real party-in-interest. Mot. 8. Petitioner asserts that Chris
`Thompson prepared the Petition and mistakenly omitted Smallworks, LLC
`from the section of the Petition that expressly identified the real parties-in-
`interest. Id. at 9. Petitioner advances that Mr. Thompson “had minimal
`involvement with the Lawsuit filed by Patent Owner against Rubicon
`Cummunications LP in May 2015, limited to working on invalidity
`contentions.” Id. Petitioner asserts that when he prepared the Petition, Mr.
`Thompson looked to the original complaint filed by Patent Owner to identify
`the real parties-in-interest, overlooking that Smallworks, LLC had been
`added as a named defendant. Id. Petitioner argues that Mr. Thompson’s
`mistake was clerical. Id.
`Petitioner further argues that the omission of Smallworks, LLC and
`the requested relief of correcting the Petition to list Smallworks, LLC as a
`real party-in-interest do not prejudice Patent Owner. Id. at 10–11. Petitioner
`asserts that “Patent Owner was not surprised, disadvantaged or prejudiced in
`any way by the omission of Smallworks LLC,” and that “[n]o harm will
`come to Patent Owner if the correction is allowed.” Petitioner further notes
`that “under 37 CFR § 42.5, the Board may determine a proper course of
`
`2
`
`
`
`IPR2016-01187
`Patent 8,894,066 B2
`conduct in a proceeding for any situation not specifically covered under the
`Rules, or waive or suspend a requirement of parts 1, 41, and 42 (with or
`without conditions).” Id. at 10.
`Patent Owner argues that Mr. Thompson’s mistake was not clerical.
`Opp. 9–12. Patent Owner argues that Mr. Thompson overlooked the listing
`of Smallworks, LLC as a named defendant in at least a dozen pleadings,
`“including the invalidity contentions themselves.” Id. at 9. Rather than
`making a clerical error, Patent Owner argues, “Petitioner lacked substantive
`understanding of the rules, substantive understanding of the facts, or both.”
`Id. at 11.
`Patent Owner also argues that “Petitioner’s claim that the Patent
`Owner is not prejudiced is demonstrably false.” Id. at 12. In support of this
`contention, Patent Owner argues that “Petitioner continues to hide at least
`one real party in interest,” other than Smallworks, LLC. Id. Patent Owner
`argues that Petitioner’s pleadings in the related district court proceeding
`inconsistently identify the involved parties, presenting a “moving target” for
`Patent Owner. Id. at 13.
`II. Discussion
`Pursuant to 35 U.S.C. § 312(a)(2), “[a] petition filed under Section
`311 may be considered only if . . . the petition identifies all real parties in
`interest.” As Patent Owner asserts, “[w]hile not jurisdictional, listing all real
`parties in interest in a petition has been described as a significant issue due
`to its implications in, among others, 35 U.S.C. § 315(e)’s estoppel effect.”
`Opp. 9 (citing Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case
`IPR2013-00606, slip op. at 7–8 (PTAB Mar. 20, 2014) (Paper 13)).
`
`3
`
`
`
`IPR2016-01187
`Patent 8,894,066 B2
`Under 37 C.F.R. § 42.104(c), provides that “[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.”
`The filing date for a petition is addressed by 37 C.F.R. § 42.106.
`Subsection (a) states “[a] petition to institute inter partes review will not be
`accorded a filing date” until it satisfies a number of requirements, which
`include identifying each real party-in-interest. § 42.106(a); see §§ 42.104,
`42.8(b)(1). Subsection (b) states “[w]here a party files an incomplete
`petition, no filing date will be accorded.” Section 42.106 does not, however,
`foreclose the Board’s discretion to maintain a petition’s original filing date
`when a party amends its real party-in-interest disclosures because, under
`§ 42.5(b), “[t]he Board may waive or suspend” § 42.106’s filing date
`provisions and “may place conditions on the waiver or suspension.”
`Our Trial Practice Guide describes the “core functions” of the real
`party-in-interest requirement as:
`to assist members of the Board in identifying potential conflicts,
`and to assure proper application of the statutory estoppel
`provisions. The latter, in turn, seeks to protect patent owners
`from harassment via successive petitions by the same or related
`parties, to prevent parties from having a “second bite at the
`apple,” and to protect the integrity of both the USPTO and
`Federal Courts by assuring that all issues are promptly raised and
`vetted.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14,
`2012).
`Regarding the question of whether the omission of Smallworks, LLC
`was a clerical mistake, we find Patent Owner’s arguments more persuasive
`than Petitioners. On the other hand, regarding the issue of whether the
`omission and the requested correction prejudice Patent Owner, we find
`
`4
`
`
`
`IPR2016-01187
`Patent 8,894,066 B2
`Petitioner’s arguments more persuasive. At this stage, neither party is
`seeking relief based on any omission of real parties-in-interest other than
`Smallworks, LLC. More importantly, any failure of Petitioner to list other
`real parties-in-interest does not persuade us that Patent Owner suffers any
`prejudice from the omission or the addition of Smallworks, LLC as a real
`party-in-interest.
`On the current record, we are not persuaded that Petitioner has
`attempted to circumvent estoppel rules, or that Patent Owner has yet
`suffered any prejudice from the omission of Smallworks, LLC as a real
`party-in-interest. In view of this, we determine that allowing the requested
`correction would be in the interests of justice and would advance the core
`functions described in the Trial Practice Guide for the real party-in-interest
`requirement. Additionally, we determine that allowing the requested
`correction would also promote “the just, speedy, and inexpensive resolution
`of our proceedings.” 37 C.F.R. § 42.1. Accordingly, we exercise our
`discretion to allow Petitioner to file a corrected Petition listing Smallworks,
`LLC as a real party-in-interest, without changing the June 10, 2016 filing
`date of the Petition. See 37 C.F.R. §§ 42.5(b), (c)(3). The corrected Petition
`shall differ from the original Petition only in the addition of Smallworks,
`LLC as a real party-in-interest.
`At the same time, we reiterate that listing all real parties-in-interest
`constitutes a significant issue. Accordingly, neither this Decision nor our
`concurrent institution of a trial forecloses further consideration of whether
`the Petitioner has correctly identified all real parties-in-interest. To the
`extent that further correction of the listed real parties-in-interest may be
`required, Petitioner is encouraged to pursue such correction promptly. The
`more promptly and proactively Petitioner acts to correct any further errors in
`
`5
`
`
`
`IPR2016-01187
`Patent 8,894,066 B2
`the listed real parties-in-interest, the more favorably we may treat any
`requests for further correction.
`Based on the foregoing, it is hereby
`ORDERED that Petitioner is authorized to file a corrected Petition
`adding Smallworks, LLC as a real party-in-interest;
`FURTHER ORDERED that the corrected Petition shall differ from
`the original Petition only in the addition of Smallworks, LLC as a real party-
`in-interest; and
`FURTHER ORDERED that the June 10, 2006 filing date of the
`original Petition shall remain unchanged.
`
`
`
`
`PETITIONER:
`Eric B. Meyertons
`Brian Mangum
`Chris Thompson
`MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C.
`emeyertons@intprop.com
`bmangum@intprop.com
`cthompson@intprop.com
`
`PATENT OWNER:
`
`Andrew Riddles
`Elizabeth Alquist
`Howard Grossman
`DAY PITNEY LLP
`ariddles@daypitney.com
`eaalquist@daypitney.com
`hgrossman@daypitney.com
`
`
`6
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