In GEA Process Engineering, Inc., v. Steuben Foods, Inc., the PTAB vacated its institution decision and terminated five IPRs because the petitions failed to identify all real-parties-in-interest (RPIs). IPR2014-00041, Paper 140 (December 23, 2014) (Public redacted version).
The Petitioner argued that the Patent Owner should be barred from raising the RPI issue after institution of the IPRs because the requirement under 35 U.S.C. § 312(a)(2) for identifying all RPIs in an IPR petition is a “petition completeness statute,” not a “standing” issue that may be challenged at any time. The Petitioner also argued that it should be allowed to correct any mistakes made in identifying the RPIs in its petitions without having to change its petition filing dates.
The Board disagreed with the Petitioner, holding that 35 U.S.C. § 312(a)(2) is an ongoing requirement that must be complied with during the pendency of the IPR, and that requiring such challenges to be made pre-institution would be prejudicial to patent owners due to the unavailability of necessary discovery prior to institution.
Explaining that the RPI determination is a “highly fact-dependent question” that must consider the “totality of the circumstances,” the Board noted that “something less than complete funding and control may be sufficient to justify treating [a] party as an RPI.” The Board further noted that one consideration in the RPI determination is “whether the non-party has an ‘opportunity to control that might reasonably be expected between two formal coparties’” (emphasis in original).
Based on additional discovery obtained by the Patent Owner after institution, the Board found that the evidence supported a “reasonable inference” that a non-party related to the Petitioner via a shared parent company should have been identified as an RPI because it had an opportunity to control the Petitioner’s participation in the IPRs.
Having determined that the petitions failed to identify all RPIs, the Board refused to allow the Petitioner to correct the RPI identification without changing the filing date of the petitions. The Board rejected the Petitioner’s arguments that “equity and justice” warranted allowing the Petitioner to correct its petitions without changing the filing dates, based on actions taken by the Petitioner throughout the IPR proceedings.
Because the Board would not allow for the filing dates to remain unchanged, it found that allowing the Petitioner to correct its petitions would be futile because, “even if corrected, the earliest filing date that could be accorded to the Petitions would not fall within the one-year period specified by the 35 U.S.C. § 315(b) statutory-bar.”
As this decision shows, Patent Owners are not limited to raising RPI identification challenges during the pre-institution period. Moreover, Petitioners who may need to correct their petitions to identify additional RPIs would be best served to do so prior to the expiration of the one-year period specified by the 35 U.S.C. § 315(b) statutory-bar.
As can also be seen from this case, the Board was open to the possibility of allowing an amended RPI listing without sacrificing the original filing date, although in the Board’s eyes the facts of this particular case did not warrant allowing such. Because the RPI inquiry is “highly fact-dependent,” room for error will likely exist. Petitioners having a good faith basis for their initial RPI listing should seek equitable relief in the event that their one-year bar date has passed.