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2014 Pat. App. LEXIS 8830

Patent Trial and Appeal Board Representative Orders, Decisions and Notices

June 27, 2014, Decided

Cases 1 IPR2014-00293 (Patent 8,314,689), Paper 18 IPR2014-00293; IPR2014-00294 (Patent 8,314,689), Paper 18 IPR2014-00294; IPR2014-00296 (Patent 8,324,552), Paper 14 IPR2014-00296; IPR2014-00297 (Patent 8,324,552), Paper 14 IPR2014-00297; IPR2014-00298 (Patent 8,324,552), Paper 18 IPR2014-00298

USPTO Bd of Patent Appeals & Interferences; Patent Trial & Appeal Bd Decs.

Opinion

BUNTING, Administrative Patent Judge.

DECISION

Service Under 35 U.S.C. § 315(b) and Real Party In Interest Under 35 U.S.C. § 312(a)(2)

I. INTRODUCTION

Petitioner TRW Automotive US LLC filed two Petitions, IPR2014-00293 and IPR2014-00294, requesting inter partes  review of U.S. Patent No. 8,314,689 B2 ("the '689 patent") on December 24, 2013, and filed three Petitions, IPR2014-00296, IPR2014-00297, and IPR2014-00298, requesting  [*2] inter partes  review of U.S. Patent No. 8,324,552 B2 ("the '552 patent") on December 26, 2013. In each of these proceedings, Patent Owner Magna Electronics, Inc. filed a Preliminary Response: 2

Case No.

Petition Paper

Preliminary Response

Paper No.

IPR2014-00293

("Pet.")

("Prelim. Resp.")

IPR2014-00294

IPR2014-00296

IPR2014-00297

IPR2014-00298

Patent Owner contends that (1) each of the respective Petitions is time-barred under 35 U.S.C. § 315(b), which provides that an inter partes  review may not be instituted based on a petition "filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement  [*3]  of the patent, " and (2) Petitioner failed to "identif[y] all real parties in interest" as required by 35 U.S.C. § 312(a)(2). Prelim. Resp. 1-2.

Following a conference call on April 10, 2014, among respective counsel for Petitioner and Patent Owner, we ordered the parties to submit additional briefing "addressing the issue of when Petitioner was 'served with a complaint' alleging infringement of the respective patents under 35 U.S.C. § 315(b)." Paper 10 ("Order"). The Order divided seventeen of the eighteen petitions into two groups, i.e., Group 1 and Group 2, in light of the common facts presented in each group. Id. at 3. Each of the proceedings identified above all fall within Group 2, and Petitioner filed a Group 2 Brief addressing the common issues in each of the instant proceedings. Paper 11 ("Brief"). Subsequently, Patent Owner filed a Reply in each of the instant proceedings. Paper 12 ("Reply"). 3 

We note that this Decision only addresses the petitions in Group 2. Because the analysis herein applies to each of these proceedings, our Decision likewise is applicable to each proceeding. Based on the record before us, for the reasons that follow, we do not deny the Petitions under §§ 315(b) and 312(a)(2). 4 

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2014 Pat. App. LEXIS 8830 *

TRW AUTOMOTIVE US LLC,; Petitioner; v.; MAGNA ELECTRONICS, INC.,; Patent Owner

Notice: [*1] 

ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion below has been designated a routine opinion.

CORE TERMS

patent, amended complaint, real party in interest, inter partes, infringement, electronic, prelim, instant proceeding, district court, entity