Lumentum Holdings, Inc. v. Capella Photonics, Inc.
Paper 38, March 4, 2016
IPR2015-00739 (Patent RE42,678 E)
[Requirements of 35 U.S.C. § 312(a) are not jurisdictional]
The Board authorized Patent Owner, Capella Photonics, Inc., to file a motion to terminate IPR limited to Patent Owner’s contentions that the Board lacked jurisdiction to institute the proceedings. The IPR Petition at issue identified JDS Uniphase Corp. (JDSU) as petitioner and real party in interest. After Petition was filed, JDSU spun out the assets relevant to these proceedings to Lumentum, which then filed an updated mandatory notice identifying itself as the new party to the proceedings. Although the mandatory notice was filed more than 21 days after the name change (in violation of 37 C.F.R. § 42.8(a)(3)), the Board accepted the notice and later granted Petitioner’s motion to re-caption the proceedings. Patent Owner did not object to re-captioning but subsequently filed Motion to Terminate asserting that the Board did not have jurisdiction to institute this IPR because Petition failed to identify all real parties in interest as required by 35 U.S.C. § 312(a).
The Board denied Patent Owner’s Motion to Terminate. The Board held that 35 U.S.C. § 312(a) requirements were not jurisdictional. The Board noted that absent a clear statement from Congress identifying a statutory limitation as jurisdictional, the courts treat such a limitation as nonjurisdictional. The language of 35 U.S.C. § 312(a) stating that a petition may be considered “only if” the enumerated requirements were met (including the requirement to identify all real parties in interest) did not transform these claim-processing rules into jurisdictional requirements.
The Board also noted that Patent Owner’s contention that Petition was incomplete at the time of filing was outside of the scope of what was authorized for the Motion to Terminate, but noted that it did not otherwise support Patent Owner’s request for termination as the Petition correctly identified the real parties in interest at the time it was filed.
Requirements of 35 U.S.C. § 312(a) are claim-processing rules and are not jurisdictional.
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