Authored by Michelle Carniaux and Michael E. Sander
In a previous blog post, we discussed challenges to IPR petitions filed by Valeo based on the failure to list all real parties in interest in their petitions:
In the petitions, the petitioners identified a number of real parties in interest, including “Valeo, Inc.” However, more than seven months prior to the petitions were filed, “Valeo, Inc.” ceased to exist as a result of corporate restructuring (a merger and name change). Valeo Inc.’s successor in interest, “Valeo North America, Inc.” was not named as a real party in interest in the petitions.
As a result of the alleged misidentification, the patent owner claimed that the petition was defective, and should lose its filing date (which would ultimately result in the petition being time barred due to the one year statutory deadline). Last week, the Board issued a terse decision on the issue in connection with one of the IPR petitions, noting that “[d]espite [the misidentification], because Valeo North America, Inc. is the legal successor to Valeo, Inc., the Petition was correct substantively, in that it identified the real party of interest.” See IPR2014-01206, No. 13 Institution Decision (P.T.A.B. Dec. 23, 2014). Ultimately however, Valeo was not successful as their petition was denied on substantive grounds.
The Board appears to allow an inadvertent misidentification of the real party in interest where the named real party in interest is the “legal successor” to an entity left off a petition. However, it remains to be seen how the Board will rule in a case where, for example, a sister company of a real party in interest is inadvertently omitted.