The PTAB Refuses to Consider New Real Party in Interest Argument Raised on Remand

The PTAB is beginning to address a small stream of cases reversed and remanded by the Federal Circuit, and the scope of what the PTAB will consider on remand is of interest.  In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00340, Paper 85 (Aug. 4, 2016), the Patent Owner sought to raise a new argument on remand that Petitioner failed to identify all real parties in interest.  Patent Owner based its argument on decisions rendered by the PTAB in related IPR proceedings between the parties during the pendency of Patent Owner’s Federal Circuit appeal of the Final Written Decision in IPR2013-00340.  The PTAB declined to consider the new real party in interest argument.

The PTAB rendered its Final Written Decision in IPR2013-00340 in November 2014, and Patent Owner timely appealed the determination that claims 1-9 of U.S. Patent No. 8,323,060 are unpatentable.  IPR2013-00340, Papers 79, 81.  In February 2016, the Federal Circuit vacated the PTAB’s determination of unpatentability and remanded.  PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734 (Fed. Cir. 2016).  On remand, the PTAB asked the parties to confer with each other and address the following:

1. All matters, identified specifically, that must be reconsidered/reassessed before the Board on remand, e.g., claims, prior art references, grounds of unpatentability, particular secondary consideration factors, particular terms within claims, etc.;

2. Whether additional briefing and/or submission of new evidence is required for anything identified in Item (1) above, or if it is not required but should be permitted, and why; and

3. Whether the party would request additional briefing and/or submission of new evidence with respect to one or more subjects identified in response to Item (1), and if so, which particular subjects;

IPR2013-00340, Paper 82 (May 20, 2016).  The parties could not agree, and so they filed separate papers in response.  IPR2014-00340, Papers 83, 84 (June 9, 2016).

In its filing with the Board, Patent Owner asserted that Petitioner’s failure to identify two entities as real parties in interest is a threshold issue that must be reconsidered on remand and requires termination of the proceeding.  IPR2013-00340, Paper 84 at 2-4.  Patent Owner made its argument based on developments that occurred in August 2015, while the appeal of the Final Written Decision in IPR2013-00340 was pending at the Federal Circuit.  Id.  Specifically, on August 18, 2015, in a series of related IPR proceedings,[1] the PTAB determined that Petitioner had failed to identify all real parties in interest, specifically finding that two other entities related to the Petitioner should have been identified because they funded and/or controlled the challenges in these related IPR proceedings.  Id.

Patent Owner argued that because the PTAB was now reconsidering the claims on remand, the PTAB also must evaluate Patent Owner’s real party in interest concerns because the real party in interest requirement is a statutory and ongoing requirement that is a threshold issue.  Id.  Patent Owner also relied on the timing of the PTAB’s decisions in the related IPR proceedings, those decisions coming while Patent Owner’s appeal of the Final Written Decision was pending at the Federal Circuit.  Petitioner countered that the real party in interest issue was not a matter “that must be reconsidered/reassessed before the Board on remand” because real party in interest identification was not raised in the Final Written Decision or the Federal Circuit appeal.  IPR2013-00340, Paper 83 at 5-6.  Petitioner also noted that Patent Owner did not raise the real party in interest issue during the Federal Circuit appeal, even though Patent Owner was aware of it, and so it was waived.  Id.  Nevertheless, recognizing it may have made an error in naming all real parties in interest, Petitioner also made a contingent request to amend its RPI identification, provided it would not affect its original filing date.  Id. at 4.

The PTAB rejected Patent Owner’s position, declining to entertain the real party in interest argument for the first time on remand.  The PTAB succinctly stated:

Further proceeding in this case is closed to any issue that was not raised by any party for a decision in the 2014 FWD.  Given that the 2014 FWD was vacated only for specific errors, we need only correct the errors as determined by our reviewing Court on remand.  Nothing more is required.  To the extent that we may permit a new issue to be raised on remand, we decline to do so here on the issue of Petitioner’s having named in its Petition all real parties in interest as required by 37 C.F.R. § 312(a)(2).  Patent Owner did not raise it before the Federal Circuit while the case was on appeal, and has not sufficiently explained in Paper 84 why we should consider the new issue now at this late stage.

IPR2013-00340, Paper 85 at 4 (emphasis added).  The real party in interest argument was newly raised on remand in this proceeding, but Patent Owner may have persuaded the PTAB to consider it more carefully had Patent Owner raised it before the Federal Circuit at the time of the August 2015 decisions in the related IPR proceedings.

More broadly, the PTAB also declined the parties’ requests for further briefing on the patentability issues back before the PTAB on remand, indicating to parties that they may not have an opportunity to supplement the record on remand even if the Federal Circuit adopts a new claim construction.  Id. at 3-4.

By:  Geoffrey Gavin

[1] IPR2014-00440 (Paper 68), IPR2014-00441 (Paper 66), and IPR2014-00736 (Paper 59).