TRW Automotive US LLC v. Magna Electronics, Inc.


Paper 14 and Paper 18

June 27, 2014

IPR2014-00293 (Patent 8,314,689)

IPR2014-00294 (Patent 8,314,689)

IPR2014-00296 (Patent 8,324,552)

IPR2014-00297 (Patent 8,324,552)

IPR2014-00298 (Patent 8,324,552)

[One year time period to file an IPR petition begins when petitioner is served with a complaint for patent infringement.

Patent owner must provide sufficient factual basis when asserting that a petitioner failed to identify all real parties in interest]

FACTS

Petitioner, TRW Automotive US LLC, filed petitions for IPR of two Magna Electronics, Inc patents on December 24, 2013. Patent Owner filed a Preliminary Response contending that (1) each of the respective Petitions is time-barred under 35 U.S.C. § 315(b) as filed over a year after the date on which Petitioner was served with a complaint alleging patent infringement; (2) Petitioner failed to identify all real parties in interest.

Time bar under 35 U.S.C. § 315(b). Patent Owner filed its complaint alleging infringement in district court in summer of 2012. On December 20, 2012, Patent Owner filed Motion for Leave to file an amended complaint with the amended complaint and a proposed order granting the Motion attached. The local rules of that district provide that if the Motion is granted, the Clerk automatically files the document without further action by the parties. The Motion was granted on December 26, 2012. Patent Owner contended that the effective date of service for the complaint was December 20, 2012, when Motion for Leave was filed, and thus, Petitioner was time barred from filing the instant petition. Petitioner contended that the effective date of service for the complaint was in fact December 26, when the Motion for Leave was granted, and thus, Petitioner was not time barred.

Failure to identify all real parties in interest. Petitioner certified itself as the only real party in interest but indicated that there were two other defendants in the patent infringement action relevant to the proceedings (these two entities were related to Petitioner and had similar names including “TRW’). Patent Owner contended that it is likely that these parties are also real parties in interest that Petitioner failed to identify, and thus, the petition must be denied pursuant to 37 C.F.R. § 42.8(b)(1).

HOLDING

The Board held that the petition was not time barred under 35 U.S.C. § 315(b). The Board determined that Petitioner was served with the complaint only when Motion for Leave was granted on December 26, 2012 and not when it was filed. The Board noted that the proposed amended complaint attached to the Motion and provided to Petitioner was not the actual complaint within the meaning of § 315(b). The Board rejected Patent Owner’s contention that Petitioner was served automatically when it received the Notice of Electronic Filing of the Motion for Leave. The Board emphasized that it is immaterial that the amended complaint was discussed with Petitioner prior to filing, that Petitioner consented to the amended complaint prior to the date it was filed, or that the counsel for Petitioner made an appearance in court on the date Motion to Leave was filed.

The Board denied Patent Owners request to deny the institution of the IPR due to failure to identify all real parties in interest pursuant to 37 C.F.R. § 42.8(b)(1). The Board found that Patent Owner did not provide sufficient factual basis to conclude that the other entities should have been identified as real parties in interest. The Board noted that the fact that the entities were co-defendants in the same patent infringement action as Petitioner or that they were related was not in itself sufficient to demonstrate that Petitioner failed to identify all real parties in interest.

TAKEAWAY

One year time period to file a petition for an IPR begins when a petitioner is served with the actual complaint in the related patent infringement action.

Patent owner must provide sufficient factual basis when asserting that a petitioner failed to identify all real parties in interest. The fact that the parties are co-defendants in the relevant patent infringement action or that they are related corporate entities does not necessarily mean that they are real parties in interest in an IPR.

 

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