Trials@uspto.gov
`571-272-7822
`
` Paper 68
`Entered: August 18, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CORNING OPTICAL COMMUNICATIONS RF, LLC,
`Petitioner,
`
`v.
`
`PPC BROADBAND, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00440 (Patent 8,597,041 B2)
`Case IPR2014-00441 (Patent 8,562,366 B2)
`Case IPR2014-00736 (Patent 6,676,446 B2)1
`____________
`
`Before JAMESON LEE, JOSIAH C. COCKS, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`DECISION
`Granting Patent Owner’s Motions to Dismiss Petitions for
`Failure to Name All Real Parties-In-Interest
`35 U.S.C. § 312(a) and 37 C.F.R. §§ 42.8(b)(1), 42.72
`
`1 This Decision addresses common issues raised in all three cases. Papers,
`arguments, and evidence submitted by Patent Owner and Petitioner as it relates to
`the issue at hand are largely the same in each case. Thus, we issue one Decision to
`be entered in each case. The parties are not authorized to use this caption without
`prior authorization of the Board.
`
`CORNING EXHIBIT 1005
`
`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`I.
`
`INTRODUCTION
`
`On August 19, 2014, we instituted an inter partes review of claims 1, 8, 9,
`
`11, 18–26, and 29 of U.S. Patent No. 8,597,041 (“the ’041 patent”) in Case
`
`IPR2014-00440, as well as an inter partes review of claims 31, 37, 39, 41, 42, 55,
`
`and 56 of U.S. Patent No. 8,562,366 (“the ’366 patent”) in Case IPR2014-00441,
`
`based on two Petitions filed by Petitioner, Corning Optical Communications RF,
`
`LLC (“Petitioner”). On September 12, 2014, we instituted an inter partes review
`
`of claims 1–7 of U.S. Patent No. 6,676,446 (“the ’446 patent”) in Case IPR2014-
`
`00736, based on a Petition also filed by Petitioner.
`
`After institution, in all three proceedings, we authorized Patent Owner, PPC
`
`Broadband, Inc. (“Patent Owner”) to file a motion for additional discovery directed
`
`to information as to whether the Petitions should have identified Petitioner’s
`
`parent, Corning Incorporated (“Corning Inc.”), and Petitioner’s sister company,
`
`Corning Optical Communications LLC (“Corning NC”), as real parties-in-interest.
`
`See, e.g., IPR2014-00440, Paper 31 (order authorizing motion).2 Specifically, we
`
`authorized a motion for discovery as to whether those two entities funded or
`
`controlled the filing and conduct of these inter partes reviews. Id. We also urged
`
`the parties to come to agreement on discovery, to obviate the need for a motion.
`
`Id. Thereafter, Patent Owner provided a Request for Discovery to Petitioner, and
`
`Petitioner responded. See, e.g., IPR2014-00440, Ex. 2100 (“Petitioner’s
`
`Objections and Responses to Patent Owner’s First Request for Discovery,”
`
`“Response to the Discovery Request” or “Discovery Response”).
`
`
`2 As discussed below, for clarity and expediency, we treat IPR2014-00440 as
`representative of all three cases. All citations are to IPR2014-00440 unless
`otherwise noted.
`
`
`
`2
`
`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`
`A few weeks later, after a subsequent telephone conference with the parties,
`
`we authorized Patent Owner to file a Motion to Dismiss the Petition for failure to
`
`name all real parties-in-interest in each of the three proceedings. E.g., IPR2014-
`
`00440, Paper 41, 2. We indicated to the parties that each Motion to Dismiss
`
`should include two sections, the first discussing why Patent Owner waited until
`
`March 2015 to raise the issue of real party-in-interest and whether Patent Owner
`
`raised the issue too late, and the second discussing the merits of the issue. Id.
`
`Because the real parties-in-interest issue is common to all three cases, and
`
`both parties filed similar papers in all cases as it relates to this issue, we consider
`
`the three cases together in this Decision. For clarity and expediency, we treat
`
`IPR2014-00440 as representative of all three cases.
`
`Patent Owner filed a Motion to Dismiss the Petition for Failure to Name All
`
`Real Parties-In-Interest in each of the three cases. Papers 43, 44 (“Motion to
`
`Dismiss” or “Motion”).3 As also authorized (Paper 50, 2), Patent Owner filed
`
`Supplemental Briefing on the Legislative History of 35 U.S.C. § 312(a)(2) (Paper
`
`52, “Supp. Briefing”). Petitioner filed an Opposition to the Motion to Dismiss
`
`(Paper 54, “Opp.”) and Patent Owner filed a Reply to the Opposition (Paper 59,
`
`“Reply”). Petitioner also filed Objections to Evidence Entered with Patent
`
`Owner’s Reply. Paper 64 (“Objections”).4 An oral hearing was held on June 4,
`
`
`3 Patent Owner originally filed “Confidential” (Paper 43) and “Redacted—Public”
`(Paper 44) versions of its Motion to Dismiss. As jointly requested by the parties,
`the confidential version of the Motion to Dismiss (Paper 43) will be designated as
`available to the public, and the original public version of the Motion (Paper 44)
`will be expunged. Paper 53, 1.
`4 Specifically, Petitioner objected to Exhibit 2142, which is cited in Patent
`Owner’s Reply. Objections 1; Reply 10. Because we do not rely on Exhibit 2142
`in this Decision, Petitioner’s objection is moot.
`
`
`
`3
`
`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`2015. A transcript of the hearing in relation to the Motion to Dismiss has been
`
`entered into the record. Paper 67 (“Tr.”).
`
`Because the Petitions fail to identify all real parties in interest as required by
`
`35 U.S.C. § 312(a)(2), we grant Patent Owner’s Motions to Dismiss, vacate our
`
`Decisions to Institute (Paper 10), and terminate the reviews.
`
`II. ANALYSIS
`
`A. Patent Owner’s Contentions
`
`Patent Owner contends that Petitioner’s parent, Corning Inc. (Ex. 2104),5
`
`and its sister company, Corning NC (Ex. 2105),6 were and are real parties-in-
`
`interest (“RPI”) because they had the opportunity to control, and actually
`
`controlled, Petitioner’s participation in these inter partes review (“IPR”)
`
`proceedings. Motion, 1, 6. Among other evidence, Patent Owner refers to
`
`Petitioner’s Response to the Discovery Request (Ex. 2100), as well as a relevant
`
`engagement letter in relation to these IPR proceedings between an executive at
`
`Corning Inc. and outside counsel for Petitioner (Ex. 2101). Motion 4–11.
`
`Specifically, Patent Owner contends that Petitioner admitted that officers
`
`and in-house counsel employed by Corning Inc. and Corning NC provided
`
`direction to counsel for Petitioner in this proceeding. Id. at 1, 4–9. To the extent
`
`that Petitioner asserts that certain individuals at Corning Inc. and Corning NC
`
`directed outside counsel only in their “capacity” as an officer or counsel to
`
`
`5 Exhibit 2104, which presents a copy of a Certificate of Interest filed by counsel
`for Petitioner with the U.S. Court of Appeals for the Federal Circuit, states
`“Corning Optical Communications RF LLC is a wholly owned subsidiary of
`Corning Oak Holding, LLC, which is a wholly owned subsidiary of Corning Inc.”
`6 Exhibit 2105, which is copy of a D&B Business Report, indicates that Corning
`NC is a subsidiary of Corning Inc.
`
`
`
`4
`
`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`Petitioner, Patent Owner contends “that ‘capacity’ clearly is in name only,”
`
`because they “did not work for Petitioner and are not paid by Petitioner.” Id. at 6.
`
`Patent Owner further contends that “[a]t the very least, the boundary lines
`
`are sufficiently blurred between the Corning entities such that―it is difficult for
`
`both insiders and outsiders to determine precisely where one ends and another
`
`begins.” Id. at 6–9 (quoting Atlanta Gas Light Co. v. Bennett Regulator Guards,
`
`Inc., Case IPR2013-00453, slip op. at 11 (PTAB Jan. 6, 2015) (Paper 88)). In
`
`addition, Patent Owner contends that Corning Inc. retained counsel for this matter,
`
`and that invoices for the matter were sent to, and paid, by Corning Inc. Motion 1,
`
`9–11.
`
`Thus, according to Patent Owner, both Corning Inc. and Corning NC
`
`exercised, or could have exercised, control over Petitioner’s participation in this
`
`proceeding, and should have been named as real parties-in-interest. Id. at 1–2, 6.
`
`Patent Owner contends that because the Petition fails to name all real parties-in-
`
`interest, its filing date must be vacated, with a new filing date to be set only if and
`
`when Petitioner submits an updated mandatory notice. Id. at 2, 12. In addition,
`
`because Patent Owner served Petitioner with a complaint alleging infringement of
`
`the challenged patent more than one year after any possible new filing date, the
`
`Petition is barred under 35 U.S.C. § 315(b), and we must terminate the proceeding.
`
`Id.
`
`Patent Owner also argues that it timely raised the RPI issue in this case. Id.
`
`at 12–15. Patent Owner explains that it served Petitioner with a complaint alleging
`
`infringement of the challenged patents on November 6, 2013. Id. at 12.7 On
`
`
`7 In IPR2014-00736, Patent Owner asserts that it served Petitioner with a
`complaint alleging infringement of the ’446 patent on June 11, 2013. Motion 12.
`
`
`
`5
`
`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`January 21, 2014, Petitioner changed its name from Corning Gilbert Inc. to
`
`Corning Optical Communications RF, LLC. Id. at 12–13. In a related district
`
`court case, on June 12, 2014, Patent Owner took the deposition of Charles
`
`Hartfelder, Director of Global Connectivity Products for both Petitioner and
`
`Corning NC, who stated that Petitioner was the only Corning entity making,
`
`selling, offering for sale, or importing accused products. Id. at 13; Ex. 2106, 12:2–
`
`9, 15:6–19. According to Patent Owner, Mr. Hartfelder’s statements at that time
`
`“served to confirm (incorrectly as it turns out) the Petitioner’s narrative as
`
`expressed through its counsel that all that occurred in early 2014 was a name
`
`change.” Motion 13–14.
`
`Thereafter, in a related ITC proceeding, in responses to interrogatories dated
`
`February 19, 2015, Mr. Hartfelder stated that while Petitioner developed,
`
`distributed, and imported accused products, Corning NC marketed and sold those
`
`connectors, and both companies had been doing so since April 2014. Id. at 14;
`
`Ex. 2107, 6, 9. In view of the conflicting statements by Mr. Hartfelder, Patent
`
`Owner investigated the RPI issue “using whatever publicly available information it
`
`could find” and asked Petitioner for additional information on February 25, 2015.
`
`Motion 14. Patent Owner then initiated a call with the Board, which took place on
`
`February 27, 2015, leading to our Order authorizing Patent Owner to file a motion
`
`for additional discovery on the RPI issue (Paper 31). Id. In view of the February
`
`2015 “triggering event” and Patent Owner’s quick activity thereafter, Patent Owner
`
`contends it does not raise the RPI issue too late to be considered in this case. Id. at
`
`14–15.
`
`
`
`6
`
`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`
`B. Petitioner’s Response
`
`
`
`Petitioner argues that Patent Owner’s Motion to Dismiss should be denied
`
`because: (1) the Board is precluded from vacating a Decision to Institute (Opp. 1–
`
`2, 19–21); (2) Patent Owner waived its right to raise the RPI issue because its
`
`Motion to Dismiss is untimely (id. at 2–6); (3) Patent Owner fails to establish that
`
`either Corning NC or Corning Inc. is an RPI, or that either funded or controlled
`
`these proceedings (id. at 6–19); and (4) in any event, a failure to name all RPIs
`
`does not necessitate dismissal of the Petitions (id. at 19–25). We discuss
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`Petitioner’s contentions in more detail in our analysis below.
`
`C. Factual Background
`
`In its Response to Patent Owner’s Discovery Request, Petitioner
`
`acknowledges that six “individuals provided direction to counsel for Petitioner in
`
`the IPR, and/or review and/or approval of any papers filed by Counsel in the IPR,”
`
`i.e., Michael Bell, Don Burris, Helen Boemmels, Dan Hulme, Jack Vynalek, and
`
`Steve Morris. Ex. 2100, 13–14. Both parties discuss four of these people in detail:
`
`Mr. Bell, Mr. Hulme, Mr. Vynalek, and Mr. Morris. Motion 4–6; Opp. 3–4, 11–
`
`14. Petitioner also provides a Declaration by Ms. Boemmels in her capacity as
`
`“Plant Controller” for Petitioner. Ex. 1088. In addition, the parties discuss Tim
`
`Aberle, who, along with Mr. Bell and Mr. Hulme, engaged in settlement
`
`discussions with Patent Owner to resolve disputes between the parties. Motion 8;
`
`Opp. 13–14; Ex. 2131 ¶¶ 10–18.
`
`According to Petitioner, three Corning entities, Petitioner (located in
`
`Glendale, Arizona), Corning NC (located in Hickory, North Carolina), and
`
`Corning Optical Communications Wireless, Inc. (located in Herndon, Virginia,
`
`“Corning Wireless”), “are organized as a business segment named ‘Optical
`
`
`
`7
`
`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`Connectivity Solutions’ (OCS), allowing these entities to share certain services for
`
`efficiency and cost purposes.” Opp. 16–17; Ex. 2120.
`
`Michael Bell acts as President of all three entities, i.e., Petitioner, Corning
`
`NC, and Corning Wireless. Opp. 17. In addition, Mr. Bell acts as Senior Vice
`
`President & General Manager of OCS. Disc. Resp. 11. Mr. Bell receives his
`
`compensation from Corning NC, and participates in “long term incentive
`
`programs” of Corning Inc. Id. Mr. Bell “includes ‘Optical Connectivity Solutions’
`
`in his automatic e-mail signature, and lists his LLC [(i.e., Corning NC)] address,
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`because that is where his mail is sent.” Opp. 17; Ex. 2131 ¶ 20. Steve Morris acts
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`as Secretary for both Petitioner and Corning NC, as well as Chief Compliance
`
`Officer for Corning NC. Ex. 2100, 14.
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`Dan Hulme, Jack Vynalek, Tim Aberle all work as patent counsel for “the
`
`Intellectual Property Department/Section of the Corning Law Department,” which
`
`Petitioner also calls “Corning IP Department.” Id. at 4, 11–12. Corning IP
`
`Department is part of Corning Inc., based out of Corning, New York. Id. at 4. Mr.
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`Aberle also acts as Assistant Secretary for Corning NC, and receives compensation
`
`from Corning NC and/or Corning Inc. Id. at 12; Opp. 12. Mr. Hulme and Mr.
`
`Vynalek receive compensation from Corning Inc. Ex. 2100, 12–14; Opp. 12.
`
`Petitioner states that the “cost of the Intellectual Property Department/ Section of
`
`the Corning Law Department is allocated among all of Corning’s reportable
`
`segments.” Id. at 12.
`
`The parties also discuss Charles Hartfelder, Director of Global Connectivity
`
`Products for both Petitioner and Corning NC. Motion 8; Ex. 2106, 12:2–9. In a
`
`deposition that took place on June 12, 2014, in a related district court case, Mr.
`
`Hartfelder testified that he is responsible for “the management of the product line”
`
`
`
`8
`
`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`regarding the same products at both companies. Id. at 12:17–14:22. When asked
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`how Petitioner relates to Corning NC, Mr. Hartfelder stated “[w]e are part of that
`
`entity.” Id. at 12:7–10. Mr. Hartfelder receives compensation from Corning NC.
`
`Id. at 14:6–8.
`
`In the same deposition, Mr. Hartfelder also testified that Petitioner is “the
`
`only entity related to Corning, Inc. that is making, selling, offering for sale and/or
`
`importing the UltraRange or UltraShield connectors.” Ex. 2106, 15:15–19. By
`
`contrast, in a related ITC proceeding, in responses to interrogatories dated
`
`February 19, 2015, Mr. Hartfelder states that Petitioner develops, distributes, and
`
`imports UltraShield connectors, while Corning NC markets and sells those
`
`connectors, and both companies have been doing so since April 2014. Ex. 2107, 6,
`
`9.
`
`Both parties discuss an engagement letter (Ex. 2101) sent to Petitioner’s
`
`outside counsel regarding this proceeding. Motion 5–6; Opp. 11. Mark
`
`Lauroesch, Vice President and General Intellectual Property Counsel for Corning
`
`Inc., sent the letter to outside counsel. Ex. 2101, COCRFLLC_94–95. The letter
`
`states that “we have engaged your firm to represent us in this matter,” i.e., the IPR
`
`proceedings, and “[m]ore particularly, we have asked you to represent [Petitioner]
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`Corning Gilbert Inc.” Id. at Ex. COCRFLLC_94. The letter further states that
`
`“Dan Hulme will be our in-house Case Manager, and will be your primary point of
`
`contact and coordination with Corning.” Id.
`
`The engagement letter also includes, as an attachment, “Corning
`
`Incorporated Outside Counsel Billing and Staffing Guidelines.” Id. at
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`COCRFLLC_95–105. The Guidelines state that “questions or suggestions may be
`
`directed to the General Counsel, any of his senior deputies, the General IP
`
`
`
`9
`
`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`Counsel, or the Case Manager.” Id. at COCRFLLC_105. The letter also includes,
`
`as another attachment, Appendix A, entitled “Intellectual Property Department
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`Electronic Billing Procedure for Vendors.” Id. at COCRFLLC_106. Appendix A
`
`states that the process “for submitting invoices or statements to the Corning
`
`Incorporated Intellectual Property department” “pertains to both Corning
`
`Incorporated (Corning, NY) and Corning Cable Systems LLC (Hickory, NC),” i.e.,
`
`Corning NC.8 Id.
`
`Consistent with the engagement letter and its attachments, Petitioner
`
`acknowledges that its outside counsel “directs its invoices for preparing the
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`Petition and for services rendered in the IPR to the Corning IP Department,” i.e.,
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`Corning Inc. Ex. 2100, 4; see also Ex. 2012; Ex. 1101 (invoices from outside
`
`counsel sent to Corning Inc. IP Department, in Corning, NY). In addition, as
`
`stated by Petitioner, “[p]ayments received by Counsel for preparing the Petition
`
`and for services rendered in the IPR were sent from Corning Incorporated, through
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`Corning Shared Services—North America [“CSS-NA”] on behalf of Petitioner.”9
`
`Ex. 2100, 6; see also Ex. 2103; Ex. 1104 (electronic payment notifications from
`
`Corning Inc., in Corning, NY); Ex. 1106 (balance sheets titled “Corning
`
`
`8 Corning NC was previously named Corning Cable Systems LLC. Opp. 10.
`9 Service Level Agreements between Corning Shared Services—North America
`(“CSS-NA”) and Petitioner indicate that Petitioner is charged for services
`described in a “Service Description Standard” (not included), which “outlines
`specific tasks that are performed and who has responsibility for executing them
`(either Business Unit or CSS-NA).” Ex. 1094; Ex. 1100. According to
`Petitioner’s witness, Ms. Boemmels, “some entities within the Corning family of
`companies utilize the services of CSS-NA, which provides invoice processing
`services on behalf of the Corning entity which agrees to utilize the services of
`CSS-NA.” Ex. 1088 ¶ 11. Counsel for Petitioner indicated during the oral hearing
`that CSS-NA “is part of” Corning Inc. Tr. 62:1–2, 68:3–13.
`
`
`
`10
`
`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`Incorporated – Restricted,” referring to “Balance Sheet – Actuals, Glendale, AZ –
`
`Corning Gilbert”).
`
`D. Timeliness of Patent Owner Raising the RPI Issue
`
`As an initial matter, Petitioner asserts that a Decision to Institute is “final,”
`
`and, therefore, cannot be vacated. Opp. 1–2 (citing 35 U.S.C. § 314(d)).
`
`According to the Petitioner, we are precluded from vacating our Decisions to
`
`Institute in these proceedings, citing § 314(d), In re Cuozzo Speed Techs., LLC,
`
`778 F.3d 1271, 1276 (Fed. Cir. 2015), Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,765 (Aug. 14, 2012) (“Trial Practice Guide”), Federal Rule of
`
`Civil Procedure 17(a), and 37 C.F.R.§§ 42.71, 42.106, etc. Id. at 1–2, 19–25. As
`
`noted by Patent Owner, the Board has addressed these points in other cases, and
`
`has clarified that we may terminate an IPR proceeding and vacate our Decisions to
`
`Institute if the Petitions fail to identify a real party-in-interest, as required under
`
`35 U.S.C. § 312(a)(2). See Atlanta Gas, Case IPR2013-00453, slip op. at 13–15
`
`(Paper 88); GEA Process Eng’g. Inc. v. Steuben Foods, Inc., Case IPR2014-00041,
`
`slip op. at 2, 10–13 (PTAB Feb. 11, 2015) (Paper 140); Medtronic, Inc. v. Robert
`
`Bosch Healthcare Sys., Inc., Case IPR2014-00488, slip op. at 18–20 (PTAB May
`
`22, 2015) (Paper 61); Medtronic, Case IPR2014-00488, slip op. at 2–5 (PTAB
`
`May 22, 2015) (Paper 59); Reply 1–2.
`
`Petitioner also contends that Patent Owner offers insufficient excuses for its
`
`delay in asserting that Corning Inc. and Corning NC are RPIs. Opp. 2–6. In
`
`support, Petitioner points out Patent Owner has sued only Petitioner since 2011 for
`
`patent infringement, and that settlement discussions occurred between the parties
`
`since early 2013. Id. at 3–4. In that capacity, Patent Owner “received a settlement
`
`communication from Mr. Bell in November 2013 concerning the litigations that
`
`
`
`11
`
`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`preceded this IPR with his email signature,” and Patent Owner “was aware of Mr.
`
`Hulme’s involvement in earlier IPRs.” Id. at 4. In addition, Petitioner contends
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`that Patent Owner “relies on a website as purported evidence that [Corning NC] is
`
`selling infringing products.” Id. at 4 (citing Motion 7–8, which refers to Ex. 2123).
`
`According to Petitioner, the “alleged sales information on the website that PO
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`relies upon has not changed since January 1, 2014, and is not an LLC [(i.e.,
`
`Corning NC)] website.” Id.
`
`Petitioner also contends that Petitioner’s officers and directors were publicly
`
`known before the Petition filing date, and Mr. Morris signed a Power of Attorney
`
`in this proceeding, as well as the April 2013 Mutual Non-Disclosure Agreement
`
`(“Rule 408 Agreement”). Id. Petitioner also asserts that Patent Owner relies on
`
`March 2014 correspondence among outside counsel regarding whether Petitioner
`
`sold accused products, as well as “Mr. Hartfelder’s June 12, 2014 testimony
`
`concerning positions at more than one Corning entity as evidence of alleged
`
`blurring.” Id. at 5.
`
`Patent Owner persuades us, nonetheless, that receipt of responses to
`
`interrogatories by Mr. Hartfelder on February 19, 2015, in the related ITC case
`
`acted sufficiently as a “triggering” event, prompting Patent Owner to question and
`
`investigate who might be RPIs of Petitioner here. See First Quality Baby
`
`Products, LLC, v. Kimberly-Clark Worldwide, Inc., Case IPR2014-01024, slip op.
`
`at 6 (PTAB July 16, 2015) (Paper 41) (discussing whether a Motion to Dismiss
`
`“was precipitated by the discovery of new information,” and whether Petitioner
`
`“was aware of the relevant facts for nearly a year or more”). We are not persuaded
`
`that noticing an e-mail signature (assuming that occurred) and/or being aware of
`
`Mr. Hulme’s involvement in earlier IPRs, Corning websites, or Petitioner’s
`
`
`
`12
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`

`
`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
`
`corporate structure, necessarily would have triggered Patent Owner to request
`
`additional discovery on the issue of RPI. Moreover, we are persuaded that Patent
`
`Owner likely was not aware of much of the information and evidence cited in its
`
`Motion to Dismiss until after it began an investigation of the RPI issue, and, more
`
`specifically, requested and obtained additional discovery, after February 19, 2015.
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`We also are persuaded that after February 19, 2015, Patent Owner acted quickly to
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`obtain information from Petitioner, to seek and obtain additional discovery, and to
`
`file the Motion to Dismiss.
`
`Thus, based on the present record, we determine that Petitioner’s challenge
`
`to the identification of the RPIs in the Petitions is not untimely.
`
`E. Analysis—Real Parties-In-Interest
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`1. Burden
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`A patent owner challenging a petitioner’s RPI disclosure must provide
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`sufficient evidence to show the disclosure is inadequate. Intellectual Ventures
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`Mgmt., LLC v. Xilinx, Inc., Case IPR2012-00018, slip op. at 3 (PTAB Jan. 24,
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`2013) (Paper 12). Prior to institution, when a patent owner provides sufficient
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`evidence that reasonably brings into question the accuracy of a petitioner’s
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`identification of RPI, the overall burden remains with the petitioner to establish
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`that it has complied with the statutory requirement to identify all RPI. Zerto, Inc.
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`v. EMC Corp., Case IPR2014-01254, slip op. at 6–7 (PTAB Feb 12, 2015) (Paper
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`32). If a patent owner raises the RPI issue after institution and after filing a
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`response to the petition, and in the form of a motion as is the case here, however,
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`the burden of proof is on the patent owner as the proponent of the motion. Thus,
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`given the circumstances of this particular case, we consider whether Patent Owner,
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`as the moving party, has met its burden of proof to establish by a preponderance of
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`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
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`the evidence that it is entitled to the requested relief, i.e., dismissing the Petitions
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`and vacating our Decisions to Institute. 37 C.F.R. § 42.20(a), (c); § 42.1(d).
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`2. Considerations and Factors
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`As stated in the Trial Practice Guide, whether a party who is not a named
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`participant in a given proceeding is a “real party-in-interest” to that proceeding “is
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`a highly fact-dependent question.” 77 Fed. Reg. at 48,759 (citing Taylor v.
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`Sturgell, 533 U.S. 880 (2008)). There is no “bright line test.” Id. The Supreme
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`Court in Taylor sets forth a list of factors that might be relevant in a particular case.
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`533 U.S. at 893–95. Although “rarely will one fact, standing alone, be
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`determinative of the inquiry” (Trial Practice Guide, 77 Fed. Reg. at 48,759), “[a]
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`common consideration is whether the non-party exercised or could have exercised
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`control over a party’s participation in a proceeding” (id. at 48,761 (citations
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`omitted)); see also Reflectix, Inc. v. Promethean Insulation Tech. LLC, Case
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`IPR2015-00039, slip op. at 12 (PTAB April 24, 2015) (Paper 18) (“The proper RPI
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`analysis [] focuses on . . . the degree to which [the related non-named entity]
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`exercised, or could have exercised, control over the Petitions.”).
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`Other considerations may include whether a non-party “funds and directs
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`and controls” an IPR petition or proceeding; the non-party’s relationship with the
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`petitioner; the non-party’s relationship to the petition itself, including the nature
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`and/or degree of involvement in the filing; and the nature of the entity filing the
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`petition. Trial Practice Guide, 77 Fed. Reg. at 48,760; see also id. at 48,759 (citing
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`Taylor, 553 U.S. at 893–95 & n.6 (2008)). A party does not become a RPI merely
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`through association with another party in an endeavor unrelated to the IPR
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`proceeding. Id. at 48,760; see also Denso Corp. v. Beacon Navigation GmbH,
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`Case IPR2013-00026, slip op. at 10–11 (PTAB Mar. 14, 2014) (Paper 34) (stating
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`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
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`that the mere fact that parties are co-defendants or concurrent defendants in related
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`litigation does not make them RPI).
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`A non-party’s participation with a petitioner may be overt or covert, and the
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`evidence may be direct or circumstantial, but the evidence as a whole must show
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`that the non-party possessed effective control over the IPR proceeding. Zoll
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`Lifecor Corp. v. Philips Elec. N. Am. Corp., Case IPR2013-00609, slip op. at 10
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`(PTAB Mar. 20, 2014) (Paper 15). In this regard, we consider “the degree of
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`control the nonparty could exert over the inter partes review.” Aruze Gaming
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`Macau, Ltd. v. MGT Gaming, Inc., Case IPR2014-01288, slip op. at 11 (PTAB
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`Feb. 20, 2015) (Paper 13).
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`We may consider whether a non-party “has the actual measure of control or
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`opportunity to control that might reasonably be expected between two formal
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`coparties.” Trial Practice Guide, 77 Fed. Reg. at 48,759 (quoting 18A CHARLES
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`ALAN WRIGHT, ARTHUR R. MILLER & EDWARD H. COOPER, FEDERAL PRACTICE &
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`PROCEDURE § 4451 (2d ed. 2011)) (internal quotations omitted). We also may
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`consider whether Petitioner’s actions “have blurred sufficiently the lines of
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`corporate separation with [an unnamed related entity], such that [the entity] could
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`have controlled the filing and participation of the IPRs.” Zoll Lifecor Corp. v.
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`Philips Elec. N. Am. Corp., Case IPR2013-00606, slip op. at 10 (PTAB Mar. 20,
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`2014) (Paper 13); see also Galderma S.A. v. Allergan Industrie, SAS, Case
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`IPR2014-01422, slip op. at 12 (PTAB Mar. 5, 2015) (Paper 14) (same person
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`serving as President and CEO of both parent and subsidiary determined to have “a
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`significant degree of effective control over the present matter”).
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`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
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`3. Analysis—Real Parties-In-Interest
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`Petitioner argues that Patent Owner has not alleged that Corning NC has
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`funded this proceeding. Opp. 8, 10. In relation to Corning Inc., Petitioner
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`contends that Patent Owner “alleges funding, and control solely through counsel,
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`not management.” Id. at 8. Petitioner asserts that such “halfway allegations do not
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`establish RPI,” and suggests that our Trial Practice Guide “requires funding,
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`direction, and control.” Id. (citing Trial Practice Guide, 77 Fed. Reg. at 48760).
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`As discussed above, however, the Trial Practice Guide indicates that whether a
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`party is a RPI “is a highly fact-dependent question,” taking into account number of
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`factual considerations. 77 Fed. Reg. at 48,759–60. Thus, “whether something less
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`than complete funding and control suffices to justify similarly treating the party
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`requires consideration of the pertinent facts.” Id. at 48,760.
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`Here, as discussed in more detail below, we determine that a preponderance
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`of the evidence indicates that “Petitioner’s actions have blurred sufficiently the
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`lines of corporate separation” with Corning NC, such that Corning NC “could have
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`controlled the filing and participation of the IPRs.” Zoll, Case IPR2013-00606,
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`slip op. at 10 (Paper 13). Furthermore, we determine that evidence sufficiently
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`establishes that Corning Inc. funded these IPR proceedings, and also exercised or
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`could have exercised control over Petitioner’s participation in these proceedings.
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`Trial Practice Guide, 77 Fed. Reg. at 48,759–60; Atlanta Gas, Case IPR2013-
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`00453, slip op. at 8–9 (Paper 88). For the reasons set forth below, Patent Owner
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`persuades us that the Petitions should have named both Corning NC and Corning
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`Inc. as real parties-in-interest.
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`IPR2014-00440 (Patent 8,597,041 B2)
`IPR2014-00441 (Patent 8,562,366 B2)
`IPR2014-00736 (Patent 6,676,446 B2)
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`a. Corning NC
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`As discussed above, Mr. Bell acts as President of both Petitioner and
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`Corning NC, as well as Corning Wireless, three Corning entities “organized as a
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`business segment” into OCS, where Mr. Bell also acts as Senior Vice President.
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`Opp. 16–17; Ex. 2120; Disc. Resp. 11. Mr. Bell includes OSC in his e-mail
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`signature, and lists his Corning NC address “because that is where his mail is
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`sent.” Opp. 17; Ex. 2131 ¶ 20. Likewise, Mr. Morris acts as Secretary for both
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`Petitioner and Corning NC, as well as Chief Compliance Officer for Corning NC,
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`and Mr. Hartfelder acts as Director of Global Connectivity Products for both
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`Petitioner and Corning NC. Ex. 2100, 14; Motion 8; Ex. 2106, 12:2–9. Mr.
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`Hartfelder manages the same product line at both companies, and has indicated that
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`Peti