Trials@uspto.gov
`571.272.7822
`
`
`Paper 13
`Entered: July 20, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FASTENERS FOR RETAIL, INC.,
`Petitioner,
`
`v.
`
`RTC INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00741 (Patent 9,173,505)
`Case IPR2018-00742 (Patent 9,149,132)
`Case IPR2018-00743 (Patent 9,504,321)
` Case IPR2018-00744 (Patent 9,635,957)1
`
`____________
`
`
`Before PATRICK R. SCANLON, MICHAEL L. WOODS, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 We issue one Order and enter it in each proceeding.
`
`
`571.272.7822
`
`
`Paper 13
`Entered: July 20, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FASTENERS FOR RETAIL, INC.,
`Petitioner,
`
`v.
`
`RTC INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00741 (Patent 9,173,505)
`Case IPR2018-00742 (Patent 9,149,132)
`Case IPR2018-00743 (Patent 9,504,321)
` Case IPR2018-00744 (Patent 9,635,957)1
`
`____________
`
`
`Before PATRICK R. SCANLON, MICHAEL L. WOODS, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 We issue one Order and enter it in each proceeding.
`
`
`
`IPR2018-00741 (Patent 9,173,505)
`IPR2018-00742 (Patent 9,149,132)
`IPR2018-00743 (Patent 9,504,321)
`IPR2018-00744 (Patent 9,635,957)
`
`
`
`
`In its preliminary responses, RTC Industries, Inc. (“Patent Owner”)
`argued that Fasteners for Retail, Inc. (“Petitioner”) failed to name all real
`parties-in-interest (“RPI”), namely, Olympus Partners LP (“Olympus”).
`Paper 11, 28 (IPR2018-00741); Paper 11, 8 (IPR2018-00742); Paper 9, 32
`(IPR2018-00743); Paper 11, 7 (IPR2018-00744). In an e-mail to the Board
`on June 28, 2018, Petitioner requested permission to file a reply to address
`the RPI issue.2 A conference call was held between counsel for the parties
`and the Board on July 19, 2018, to discuss Petitioner’s request.
`The statute governing inter partes review proceedings sets forth
`certain requirements for a petition for inter partes review, including that “the
`petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a); see also
`37 C.F.R. § 42.8(b)(1) (providing a requirement to identify real parties-in-
`interest in mandatory notices). “Whether a party who is not a named
`participant in a given proceeding nonetheless constitutes a ‘real party-in-
`interest’ . . . to that proceeding is a highly fact-dependent question” with no
`“bright line test,” and is assessed “on a case-by-case basis.” 77 Fed. Reg. at
`48,759 (citing Taylor v. Sturgell, 553 U.S. 880, 893–95 (2008)).
`During the conference call, Patent Owner indicated that it did not
`oppose allowing Petitioner to file a short reply to address the RPI issue.
`Patent Owner argued, however, that Petitioner should not be allowed to
`amend its mandatory notices to name other real parties-in-interest, because
`this practice would encourage gamesmanship. We are not persuaded by this
`
`
`2 In the same e-mail, Petitioner also requested permission to file motion for
`sanctions, which request we deny at this time.
`
`2
`
`
`
`
`
`IPR2018-00741 (Patent 9,173,505)
`IPR2018-00742 (Patent 9,149,132)
`IPR2018-00743 (Patent 9,504,321)
`IPR2018-00744 (Patent 9,635,957)
`
`argument. Our precedential decision in Lumentum Holdings, Inc. v. Capella
`Photonics, Inc., Case IPR2015-00739, slip op. at 5 (PTAB Mar. 4, 2016)
`(Paper 38), indicates that “a lapse in compliance with those requirements
`[under 35 U.S.C. § 312(a), including that all real parties in interest be
`identified] does not deprive the Board of jurisdiction over the proceeding, or
`preclude the Board from permitting such lapse to be rectified.” See also
`Intel Corp. v. Alacritech, Inc., Case IPR2017-01392, slip op. at 23 (PTAB
`Nov. 30, 2017) (Paper 11) (noting that real parties in interest can be
`corrected); Elekta, Inc. v. Varian Med. Sys., Inc., Case IPR2015-01401, slip
`op. at 6–10 (PTAB Dec. 31, 2015) (Paper 19) (holding that disclosing
`additional real parties in interest via an updated disclosure does not mandate
`a change in petition filing date).
`Our policy is to “secure the just, speedy, and inexpensive resolution of
`every [inter partes review] proceeding.” 37 C.F.R. § 42.1. To that end, we
`grant Petitioner leave, if it wishes, to amend its mandatory notices to include
`other parties, including Olympus. Such amendment would not change the
`filing date accorded to the petitions in these proceedings. This Order does
`not decide the issue of whether Olympus is a real party in interest. That is,
`this Order shall not be construed as a finding that Olympus is a real party in
`interest in these proceedings. If Petitioner does not believe that Olympus is
`an unnamed real party in interest, in lieu of updating its mandatory notices,
`Petitioner may file a reply brief to address Patent Owner’s argument
`regarding the real party in interest issue (and only that issue).
`For the reasons given, it is hereby:
`
`3
`
`
`
`IPR2018-00741 (Patent 9,173,505)
`IPR2018-00742 (Patent 9,149,132)
`IPR2018-00743 (Patent 9,504,321)
`IPR2018-00744 (Patent 9,635,957)
`
`
`
`
`ORDERED that within 7 days of the entry of this Order, Petitioner
`may amend its mandatory notices to name other parties, including Olympus,
`as a real party in interest in each of IPR2018-00741, IPR2018-00742,
`IPR2018-00743, and IPR2018-00744, and such updating of its mandatory
`notices will not result in a new filing date accorded to the petitions;
`FURTHER ORDERED that in lieu of updating its mandatory notices,
`Petitioner may file a 7-page reply brief to address Patent Owner’s RPI
`arguments in each of IPR2018-00741, IPR2018-00742, IPR2018-00743, and
`IPR2018-00744, if such briefs are filed within 7 days of the entry of this
`Order; and
`FURTHER ORDERED that Patent Owner is not authorized, at this
`time, to file a sur reply in response to Petitioner’s reply briefs, if filed.
`
`
`
`4
`
`
`
`
`
`IPR2018-00741 (Patent 9,173,505)
`IPR2018-00742 (Patent 9,149,132)
`IPR2018-00743 (Patent 9,504,321)
`IPR2018-00744 (Patent 9,635,957)
`
`PETITIONER:
`
`Douglas H. Siegel
`William B. Berndt
`Ron N. Sklar
`Honigman Miller Schwartz & Cohn LLP
`dsiegel@honigman.com
`wberndt@honigman.com
`rsklar@honigman.com
`
`
`PATENT OWNER:
`
`Joseph J. Berghammer
`Scott A. Burow
`Bradley J. Van Pelt
`Kevin C. Keenan
`Eric A. Zelepugas
`Banner & Witcoff, Ltd.
`RTC-IPR@bannerwitcoff.com
`jberghammer@bannerwitcoff.com
`sburow@bannerwitcoff.com
`bvanpelt@bannerwitcoff.com
`kkeenan@bannerwitcoff.com
`ezelepugas@bannerwitcoff.com
`
`
`5
`
`
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