Petition for Inter Partes Review by Sony Computer Entertainment America LLC, IPR2013-00634 (PTAB April 2, 2015, Order) (Meyer, APJ)
Monday, April 6, 2015
Motion to Terminate IPR for Failure to Name Real Party-In-Interest Denied as Untimely
The Board denied the patent owner's motion to terminate proceedings for failure to name real parties-in-interest because the patent owner's arguments were not timely. "[I]f Patent Owner had challenged the RPI identification in its Preliminary Response, and if we had found the RPI identification to be defective, Petitioner, at a minimum, would have had an opportunity to re-file its Petition correcting any problems therewith. Patent Owner, instead, waited until . . . a mere six weeks before the deadline for the Board to issue its Final Written Decision . . . to bring any issue with the RPI identification to the attention of the Board. We agree with Petitioner that to grant Patent Owner’s Motion under these circumstances would create incentives encouraging Patent Owners to reserve arguments relating to RPIs that could be brought early in the proceeding until after all the merits in the underlying review have been briefed and argued. Our rules, however, should be construed to encourage the opposite. . . . [The] Patent Owner asserts that '[a] challenge to the naming of RPIs is a jurisdictional issue that can be raised at any time.' . . . The portion of the Final Rule upon which Patent Owner appears to rely, states that '[a]fter institution, standing issues may still be raised during the trial.' . . . [T]his statement . . . cannot be seen as 'an open invitation to submit late RPI challenges where a [Patent Owner] could have raised the issue at the outset.'"