On
These decisions are de-designated and no longer binding on the PTAB because they conflict with the decision in
The Corning Optical Rule: No Second Chances on RPI Disclosure
The reinstated Corning Optical decision establishes a bright-line rule with severe consequences for petitioners who fail to properly identify all real parties in interest at the outset of inter partes review proceedings.
In Corning Optical, the PTAB granted Patent Owner PPC Broadband's motion to dismiss three IPR proceedings and vacated its earlier institution decisions after determining that
The evidence revealed:
- Hired outside counsel through an engagement letter signed by a
Corning Inc. executive - Paid all invoices for the IPR proceedings through its payment system
-
Its
IP Department attorneys directed counsel and participated in settlement discussions - Acted as the “in-house Case Manager” per the engagement letter
Corning NC's entanglement:
- Shared the same President, Secretary, and other officers with Petitioner
- Officers held identical titles at both entities and managed the same product lines
- Corporate boundaries were “so intertwined that it is difficult for both insiders and outsiders to determine precisely where one ends and another begins”
- Marketing and selling the accused products while Petitioner manufactured them
The Unforgiving Consequence
The Board held that under 35 U.S.C. § 312(a)(2), an IPR petition may be considered “only if” it identifies “all” real parties in interest. Because this statutory requirement was not met, the petitions were deemed incomplete and could not be considered. Critically, the Board ruled that any corrected petition identifying the additional RPIs would receive a new filing date under 37 C.F.R. § 42.106(b). Since Patent Owner had sued Petitioner more than a year before any possible new filing date, the corrected petitions would be time-barred under 35 U.S.C. § 315(b)'s one-year limitation.
Result: Complete dismissal without any merits determination on patent validity. The Corning Optical panel explicitly rejected arguments that petitioners should be allowed to correct RPI disclosures without losing their filing date—the exact approach later adopted in Proppant Express and
Implications for Practitioners
With the de-designation of Proppant Express and
1. No room for error. RPI disclosure is not subject to the PTAB's typical flexibility on procedural matters. Get it wrong at filing, and there's no do-over.
2.Investigate thoroughly before filing. Corporate structures involving parents, subsidiaries, and sister companies require careful analysis. Consider:
- Who is funding the proceeding?
- Who hired and directs counsel?
- Who controls litigation strategy and settlement discussions?
- Are corporate boundaries sufficiently distinct, or do shared officers and intertwined operations blur the lines?
3. The one-year bar becomes a trap. Combined with § 315(b)'s time limitation, an RPI disclosure error can be fatal if discovered after the one-year window closes.
4. Patent owners have leverage. Strategic patent owners can use RPI challenges as a procedural kill shot, obtaining dismissal without ever addressing patent validity.
5. Over-disclosure is safer than under-disclosure. When in doubt, name additional entities as RPIs. The consequences of omission far outweigh any perceived strategic advantage of limiting disclosure.
The USPTO's decision to de-designate Proppant Express and
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
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