Sharkninja Operating LLC v. iRobot Corp., Case IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) (precedential).
Before: McMillin, Wieker, Melvin.
On December 4, the PTAB designated this decision precedential for its holding regarding naming all real parties in interest in the petition.
Three SharkNinja entities were co-petitioners on the IPR petition. JS Global Lifestyle Company is the ultimate corporate parent of the SharkNinja entities, but the petition did not name JS Global as a real party in interest (RPI). Patent Owner argued the petition should be denied under 35 USC § 312 for failing to name all RPI. Petitioner countered that all RPI were named, but also offered to amend its mandatory notices, if the Board determined that JS Global should have been listed as an RPI.
The Board first noted that §312 serves important notice functions to both patent owners (so that they may identify whether petitioner is barred from bringing an IPR due to an RPI that is time-barred) and the Board (so that it may identify conflicts of interest that are not readily apparent). But amendment of the RPI disclosure is allowed after the petition is filed, although Petitioners must comply with these requirements in good faith.
On the facts of this case, the Board held that it did not need to determine whether JS Global is an RPI "because, even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315." This is because the Board's jurisdiction does not rest upon a correct identification of all RPIs in the petition. The Board noted that the parties had provided at least twenty pages of briefing on whether JS Global was an RPI, but petitioner never alleged that failure to name JS Global should result in termination of the petition. There was also no allegation that JS Global was barred or estoppel from the proceeding, or any allegation that petitioners purposefully omitted JS Global to gain some advantage.
The Board next acknowledged that prior decisions both had and had not gone through the entire RPI analysis where there was no allegation that the failure to name an RPI would have made any material difference. But the Board acknowledged that where the RPI analysis would not make any material difference, not engaging in the RPI analysis better served the interest of cost and efficiency. Therefore, the Board determined not to consider whether JS Global must be named as an RPI and instituted the petition because the petition was otherwise sufficient for institution on the merits.
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