`571-272-7822
`
`
`
`
`
`Paper 12
`Entered: May 14, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS
`RESEARCH INSTITUTRE,
`KWANGWOON UNIVERSITY INDUSTRY–ACADEMIC
`COLLABORATION FOUNDATION, AND
`UNIVERSITY–INDUSTRY COOPERATION GROUP
`OF KYUNG HEE UNIVERSITY,
`Patent Owner.
`____________
`
`IPR2021-00368
`Patent 9,736,484 B2
`____________
`
`
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`Denying Request for Additional Briefing
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2021-00368
`Patent 9,736,484 B2
`
`
`INTRODUCTION
`In the Petition, Petitioner identifies itself as the sole real party in
`interest, and Petitioner states that it provided Patent Owner with voluntary
`discovery relating to the issue. Pet. 73. Patent Owner’s Preliminary
`Response argues Petitioner has not satisfied its obligation to identify all real
`parties in interest. Prelim. Resp. 56–70.
`With an e-mail to the Board, Petitioner requests authorization to file a
`15–page reply to Patent Owner’s Preliminary Response. Ex. 3001. Patent
`Owner provided an e-mail opposing Petitioner’s request. Ex. 3002.
`
`DISCUSSION
`Among other requirements, a petition for inter partes review may be
`considered only if “the petition identifies all real parties in interest.”
`35 U.S.C. § 312(a)(2); accord 37 C.F.R. § 42.8(b)(1) (requiring petitioners
`to “[i]dentify each real party-in-interest for the party” as part of a
`petitioner’s mandatory notices). The petitioner bears the burden of
`persuasion to show that it accurately names all real parties in interest.
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1343 (Fed.
`Cir. 2018). That requirement is not jurisdictional, however; “if a petition
`fails to identify all real parties in interest under § 312(a)(2), the Director can,
`and does, allow the petitioner to add a real party in interest.” Wi-Fi One,
`LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en
`banc); accord Proppant Express Investments, LLC v. Oren Techs., LLC,
`IPR2017-01917, Paper 86 at 7–8 (PTAB Feb. 13, 2019) (precedential).
`The Board’s precedential decision in SharkNinja Operating LLC v.
`iRobot Corp., IPR2020-00734, Paper 11 (Oct. 6, 2020) provides that at least
`under certain circumstances, the Board does not need to decide whether a
`
`2
`
`
`
`IPR2021-00368
`Patent 9,736,484 B2
`
`party has identified all real parties in interest at the institution stage. As in
`SharkNinja, there is no argument here that a time bar or other estoppel
`would prevent institution if an unnamed party were identified as a real party
`in interest. See id. at 19. Although Patent Owner is correct that SharkNinja
`does not prevent the Board from determining whether Petitioner has satisfied
`its obligation to identify all real parties in interest at the institution stage
`(Prelim. Resp. 52; see Ex. 3002), we decline to do so. See SharkNinja,
`IPR2020-00734, Paper 11 at 19–20 (noting that the interests of cost and
`efficiency favor deciding a contested identification of real parties in interest
`after institution of trial).
`Accordingly, we deny Petitioner’s request for authorization to file a
`reply to Patent Owner’s Preliminary Response.
`
`ORDER
`It is ORDERED that Petitioner’s request for authorization to file a
`reply to Patent Owner’s Preliminary Response is denied.
`
`
`
`
`
`3
`
`
`
`IPR2021-00368
`Patent 9,736,484 B2
`
`For PETITIONER:
`Andrew R. Sommer
`Greenberg Traurig, LLP
`sommera@gtlaw.com
`
`Ashraf Fawzy
`Roshan S. Mansinghani
`UNIFIED PATENTS, LLC
`afawzy@unifiedpatents.com
`roshan@unifiedpatents.com
`For PATENT OWNER:
`William H. Mandir
`Fadi Kiblawi
`John F. Rabena
`SUGHRUE MION, PLLC
`wmandir@sughrue.com
`fkiblawi@sughrue.com
`jrabena@sughrue.com
`
`
`
`
`
`4
`
`
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