Lumentum v. Capella Photonics (IPR2015-00739): Updating the Real Party in Interest Is Not Jurisdictional

Corporate reorganizations happen during IPRs, and the real parties in interest named in a petition can change as a result. Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Paper 38, March 4, 2016), considered what happens when a petitioner reports such a change late. The Board designated the decision precedential, and later Board decisions cite it for the principle that 35 U.S.C. § 312(a) is not jurisdictional. Designations can change, so check the USPTO’s current list of precedential and informative decisions.

Background

The petition, filed in February 2015, named JDS Uniphase Corporation as petitioner and real party in interest (RPI). In late July and early August 2015, JDSU was renamed Viavi Solutions, and certain business segments were spun out to three Lumentum entities. The Board instituted trial on August 25, 2015. On September 15, 2015, the petitioner filed an updated mandatory notice identifying the Lumentum entities as the RPIs. That notice came later than the 21 days allowed by 37 C.F.R. § 42.8(a)(3).

In January 2016 the Board accepted the late notice under § 42.5(c)(3) and later granted an unopposed motion to re-caption the case. The patent owner then sought, and was authorized to file, a motion to terminate limited to whether the Board had lacked jurisdiction to institute.

What the Board decided

The Board denied the motion.

Section 312(a) is not jurisdictional. Adopting the reasoning of an earlier decision, Elekta v. Varian, the Board applied the Supreme Court’s test: a statutory requirement is jurisdictional only if Congress clearly says so. The emphatic “may be considered only if” language of § 312(a) does not do that. Its requirements are claim-processing rules that promote orderly proceedings. A lapse in compliance does not deprive the Board of jurisdiction or prevent it from allowing the lapse to be fixed. The Board pointed out the alternative would be absurd: a patent owner could end a trial at the last minute by showing that a petition omitted a copy of one cited reference.

The rules contemplate change. Because § 42.8(a)(3) gives a party 21 days to report a change in RPI, jurisdiction plainly is not lost the moment a petition stops naming every current RPI.

The petition was complete when filed. There was no dispute that the petition named all RPIs when filed, so it properly received its filing date. The later notice updated the petition with new information; it did not correct a defect, and no new filing date was needed.

The Board also rejected the argument that a petitioner must report RPI changes before an institution decision whose date it cannot know, and found no gamesmanship: the patent owner had raised no issue for more than four months after the updated notice.

Why it matters

Lumentum moved the Board away from treating RPI defects as automatically fatal. By classifying § 312(a) as non-jurisdictional, it opened the door to correcting lapses in appropriate circumstances, which later decisions extended to correcting RPI omissions. Compare the stricter approach a year earlier in Reflectix v. Promethean.

The decision also has limits. It does not excuse missing the § 315(b) time bar, which the Federal Circuit has treated differently from § 312(a); and it does not mean every defect will be excused. In Luv N’ Care v. McGinley, the Board cited Lumentum but still refused to excuse an unpaid fee. For RPI basics, see who is the real party in interest.

Later developments

In Wi-Fi One, LLC v. Broadcom Corp. (Fed. Cir. 2018) (en banc), the court distinguished § 312(a)(2) from the § 315(b) time bar and noted that the Director can allow a petitioner to add an RPI. Relying on Lumentum, the Board in Proppant Express v. Oren Technologies (2019) allowed a petitioner to add RPIs after institution without losing its filing date. Check current Board precedent for how RPI disputes are handled today.

Key takeaways

• 35 U.S.C. § 312(a) sets requirements for considering a petition but is not jurisdictional.
• A late notice of a post-filing RPI change was accepted under § 42.5(c)(3), and the proceeding continued.
• A petition complete when filed keeps its filing date when later updated with new information.
• Lumentum underlies later decisions allowing RPI corrections, but it does not excuse the § 315(b) bar.