Intellectual Ventures Management , LLC v. Patents of Xilinx, Inc.

Papers No. 12, January 24, 2013

IPR2012-00018 (Patent 7,566,960)

IPR2012-00019 (Patent 8,062,968)

IPR2012-00020 (Patent 8,058,897)

IPR2012-00023 (Patent 7,994,609)

[The burden of showing inadequacy of disclosure of the real parties in interest in the inter partes review proceedings is on the party asserting such an inadequacy]

FACTS

Petitioner Intellectual Ventures Management, LLC (‘IVM’) filed four separate petitions for inter partes review of four patents held by Xilinx, Inc. and identified only itself as the real party in interest. In each of these proceedings, Xilinx filed a preliminary response arguing that IVM’s petitions should be denied because they fail to identify all real parties in interest as required by 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1). In support of this assertion, Xilinx pointed to the certificate of interested entities filed by the defendants in a District Court case in which Xilinx was the plaintiff (and which was related to another case in which Xilinx sued IVM), but which was not listed by either party as a matter related to the proceedings before the Board (Paper 10 at 8). The defendants in that case filed the certificate of interested entities pursuant to the local District Court rules and the Federal Rule of Civil Procedure 7.1 and identified 63 entities with interest in the outcome of the case.

HOLDING

The Board denied Xilinx’ requests to dismiss petitioner’s claims on the basis of failure to identify all parties in interest. The Board held that the party challenging the adequacy of disclosure of the real parties in interest must come forward with sufficient evidence to demonstrate this inadequacy. The Board held that Xilinx failed to demonstrate that the requirements of the local District Court rules and the Federal Rule of Civil Procedure 7.1 as to the disclosure of interested parties are the same or even similar in kind to the considerations set forth in the Trial Practice Guide as to the determination of the real parties in interest for the purposes of the inter partes review. The Board further held that the subject matter and issues in the District Court proceedings were different from the four inter partes review proceedings before it. The Board refused to assume that the interested parties in those proceedings should be named real parties in interest in inter partes review in the absence of evidence to support this determination.

TAKEAWAY

The Board emphasized that the burden of showing inadequacy of disclosure of the real parties in interest in an IPR as required by 37 C.F.R. § 42.8(b)(1) is on the party asserting such an inadequacy. The Board will not assume that parties identified as interested pursuant to local rules or the Federal Rules of Civil Procedure in District Court proceedings involving the party but not identified as a matter related to the proceedings before the Board are real parties in interest.

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