By Chris Hodge* and Carl Kukkonen –
In a recently designated precedential decision, the Patent Trials and Appeals Board (“PTAB”) considered challenges to claims covering autonomous robotic cleaning devices. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB. Oct. 6, 2020) (designated as precedential Dec. 4, 2020). The PTAB instituted inter partes review over 35 U.S.C. § 312(a)(2) challenges by the patent owner. In its institution discussion, the PTAB determined that it does not need to resolve a dispute regarding a possible real party-in-interest (“RPI”) if the determination would not impact its institution decision. The PTAB declined to consider whether a non-party, JS Global Lifestyle Company Limited (“JS Global”), was an unnamed RPI. Instead, the decision considered 35 U.S.C. § 312(a)(2) determinations to be unnecessary for establishing PTAB jurisdiction.
The petitioners SharkNinja Operating LLC, SharkNinja Management LLC, and SharkNinja Sales Company requested institution of inter partes review of claim 1–19 of Patent No. 9,921,586. The bulk of the opinion is the PTAB’s consideration of the substance of petitioners’ obviousness challenges to patentability; concluding that petitioner showed reasonable likelihood of prevailing on at least one of the claims. In its preliminary response, the patent owner, IRobot Corporation, further argued that JS Global was a necessary RPI as the alleged “ultimate corporate parent for all three petitioners.” Conversely, the petitioners asserted that it named all RPIs. However, if the PTAB determined it necessary, petitioner argued that it should be permitted to amend its Mandatory Notice to include JS Global. In rejecting the patent holders challenges, the PTAB specifically noted this offer to amend.
Section 312(a)(2) requires that that “petition identif[y] all real parties in interest.” This provision notifies patent holders so that interested parties may act to prevent time-bar, estoppel, or conflicts of interest. Section 37 C.F.R. § 42.11(a) (2019) further requires petitioners to comply with good faith and candor. The determination of whether a non-party is a RPI is multifactor and fact-dependent. See Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 6 (Jan. 24, 2019).
Here, the decision emphasized that there was “no allegation or evidence that JS Global is barred or estopped from this proceeding, or that Petitioner has purposefully omitted JS Global to gain some advantage.” The PTAB cited Federal Circuit precedent along with its holding in Lumentum Holdings, Inc. v. Capella Photonics, Inc. to establish that “correct” identification of all RPIs in a petition is not jurisdictionally required for the PTAB to consider a petition. IPR2015-00739, Paper 38 at 6 (Mar. 4, 2016); Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019). Referencing interests of cost and efficiency, the decision found the “lengthy exercise” of determining whether a petitioner named all RPIs to be “unnecessary” in circumstance such as this.
Takeaway: The PTAB declined to deny institution on the basis of 35 U.S.C. §312(a)(2) alone, when there was no further evidence tending to show time bar implications or other issues beyond the RPI-naming procedural requirement.
*Chris recently joined the New Lawyers Group in Jones Day’s San Diego Office.