GEA Process Engineering, Inc. v. Steuben Foods, Inc.
December 23, 2014
Paper No. 135, IPR2014-00041 (patent 6,945,013 B2)
Paper No. 114, IPR2014-00043 (patent 6,475,435 B1)
Paper No. 113, IPR2014-00051 (patent 6,209,591 B1)
Paper No. 134, IPR2014-00054 (patent 6,481,468 B1)
Paper No. 106, IPR2014-00055 (patent 6,536,188 B1)
[Failure to identify all real parties in interest in an IPR petition may be raised even after the action is instituted; a party may be found to be an RPI if it is shown that it had the opportunity to exercise control over the proceedings, as may be evidenced by the fact that the party funded the proceedings]
FACTS
Patent owner Steuben Foods, Inc. (‘Steuben’) filed a motion to determine whether petitioner GEA Process Engineering, Inc. (‘GEA’) should have identified GEA Procomac S.p.A. (‘Procomac’) as a real party in interest (‘RPI’) in its IPR petitions. In a pending district court action, Steuben sued both GEA and Procomac for infringement of all five patents at issue in these proceedings. Procomac and GEA had the same parent company, were represented in the district court by the same counsel, Procomac was invoiced by GEA and paid all legal expenses associated with these IPRs, but was not named as an RPI in GEA’s petitions.
HOLDING
The Board rejected GEA’s contention that claims of failure to identify all RPIs must be brought by the Patent Owner before or with its preliminary response. The Board found that filing of the preliminary response was optional and that the requirement to identify all RPIs was ongoing and must be complied with during the pendency of the petition, and therefore, Patent Owner may raise such claims even after the action is instituted.
The Board rejected GEA’s argument that Procomac was not an RPI in these proceedings because it did not exercise control over them. The Board found that on the totality of circumstances Procomac was an RPI. The circumstances considered by the Board included the fact that Procomac had the opportunity to exercise control over these IPR proceedings as it paid all legal expenses associated with them, that the two companies were related, that they were co-defendants in Steuben’s patents infringement action, and that both companies were represented in that action by the same counsel, who also represented GEA in these IPR proceedings.
The Board further held that failure to include all RPIs in the petition was not merely a clerical or typographical mistake that could be corrected without changing the filing date, as it impaired the Board’s ability to determine the Office’s conflicts of interest in the action, whether an IPR may be barred under 35 U.S.C. § 315(a)(1) (barring IPR when the petitioner or an RPI previously challenged the validity of the patent claims in a civil action), or whether an IPR or a privy is estopped from requesting review under 35 U.S.C. § 315(e) (precluding petitioner, RPI, or a privy to maintain proceedings based on a claim that was raised or reasonably could have been raised in a previous IPR resulting in a decision).
The Board held that because GEA failed to identify Procomac as an RPI in its petition and it was not a clerical error, GEA must lose its filing date. Because the new filing date would fall outside of the one year period since Steuben filed its patent infringement claims against GEA and Procomac in district court (as required by 35 U.S.C. § 315(b)), GEA’s petition for instituting the IPR must be denied.
TAKEAWAY
Claims of failure to identify all RPIs in an IPR petition may be raised by the Patent Owner even after the action is instituted. A party may be found to be an RPI on the totality of circumstances even if the party did not actually exercise control over the proceedings when is shown that the party had the opportunity to exercise such control, as may be evidenced by the fact that the party paid legal expenses for the proceedings. Failure to identify all RPIs is not a clerical error that can be corrected without changing the filing date.
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