Reflectix, Inc.v.Promethean Insulation Technology LLC

Patent Trial and Appeal Board

Apr 24, 2015

13086193 (P.T.A.B. Apr. 24, 2015)

Trials@uspto.gov Paper 18
571-272-7822 Date: April 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

REFLECTIX, INC.,
Petitioner,

v.

PROMETHEAN INSULATION TECHNOLOGY LLC,
Patent Owner.
____________

Cases: IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)
____________

Before LINDA M. GAUDETTE, CHRISTOPHER L. CRUMBLEY, and
KRISTINA M. KALAN, Administrative Patent Judges.

CRUMBLEY, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 312(a) and 37 C.F.R. § 42.8

IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

2

I. INTRODUCTION
Reflectix, Inc. filed five Petitions seeking inter partes review of the
following claims of five related patents:
Case Patent No.
1
Petition (“Pet.”) Claims Challenged
IPR2015-00039 7,935,410 B2 Paper 1 1–5, 9, 10, 14
IPR2015-00042 7,935,411 B2 Paper 2 1, 2, 7, 8, 10
IPR2015-00044 8,327,601 B2 Paper 1 1–5, 14, 16, 28,
30–32, 35–37
IPR2015-00045 8,343,614 B2 Paper 2 1, 2, 14–16,19–21
IPR2015-00047 8,221,871 B2 Paper 1 1, 2, 18–20, 23–25

The owner of the patents, Promethean Insulation Technology LLC,
filed Patent Owner Preliminary Responses. Paper 10,
2
“Prelim. Resp.”
Pursuant to a request from Reflectix, we authorized further briefing
regarding real party in interest, and Reflectix filed a Reply to the Preliminary
Response (Paper 12, “Reply”).
The panel determined that further briefing on two issues would be
beneficial, and ordered the parties to file cross-briefing limited to these
issues. Paper 13. Reflectix filed Additional Briefing (Paper 15) and a Reply

1
The challenged patents are included as Ex. 1001 in the record of each case.
2
Because these five cases present the same dispositive issue, we treat them
together. For expediency, we cite to the record in IPR2015-00039.
Substantially similar papers may be found in the records of the other four
cases.
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

3

(Paper 16), and Promethean also filed Additional Briefing (Paper 14) and a
Response (Paper 17).
Pursuant to 35 U.S.C. § 312(a)(2), we may consider a petition for
inter partes review “only if . . . the petition identifies all real parties in
interest.” Upon consideration of the briefing and supporting evidence, we
determine that Reflectix’s Petitions do not identify all real parties in interest
(“RPIs”). We further determine that Reflectix has not established good
cause for late correction of its Petitions, or that such correction would be in
the interests of justice. 37 C.F.R. § 42.5(c)(3). Accordingly, we may not
consider the Petitions, and cannot institute an inter partes review of the
challenged claims.
A. Related Proceedings
Promethean has asserted the challenged patents against Reflectix and
its parent company, Sealed Air Corporation (“SAC”), in an action in the
U.S. District Court for the Eastern District of Texas, captioned Promethean
Insulation Tech. LLC v. Sealed Air Corp., Civil Action No. 2:13-cv-01113.
Pet. 1; Paper 6, 1. That action originally included The Home Depot, Inc. and
Home Depot U.S.A., Inc. (collectively, “Home Depot”) as additional
defendants. Ex. 2005. On May 5, 2014, the parties filed a Stipulation
dismissing SAC and The Home Depot, Inc. from the lawsuit. Id.

IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

4

B. Factual Background
While the parties dispute whether SAC and Home Depot are real
parties in interest to the present inter partes review proceedings, certain
undisputed facts have emerged during the course of the parties’ briefing
regarding the relationship between Reflectix and its parent corporations.
3

Reflectix is a wholly owned subsidiary of Sealed Air Corporation
(US) (“SAC-US”), which in turn is owned by SAC.
4
Reply 2; Ex. 2004, 4.
Several individuals are employees and/or corporate officers of Reflectix and
either SAC or SAC-US, while other individuals have roles in all three
companies. For example, Dale Tokarski, the President of Reflectix, is also
an employee of SAC-US. Reply 2. Costs of Mr. Tokarski’s employment at
SAC-US are charged back to Reflectix. Id. at 2 n.1. As an additional
example, Norman D. Finch, Jr. is a Director, Vice President, and Secretary
of Reflectix; a Director, Vice President, General Counsel, and Secretary of
SAC-US; and Secretary and Vice President of SAC. Ex. 4002
5
¶ 5.

3
With minor exceptions, the parties’ briefing has not focused on the
relationship between Reflectix and Home Depot, nor do we find it necessary
to do so. As discussed herein, the relationship between Reflectix and its
parent corporations, and their control of the instant Petitions, is dispositive
of these proceedings.
4
In this Decision, we will refer to all three companies collectively as “the
Sealed Air corporate family.”
5
Reflectix numbered the Exhibits filed with its Petitions in the 1000 range,
the Exhibits filed with its Reply in the 3000 range, and the Exhibits filed
with its Additional Briefing in the 4000 range. This is not in compliance
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

5

The companies of the Sealed Air corporate family also share in-house
legal counsel. Reflectix submitted the testimony of Daniel B. Ruble, an
attorney employed by SAC-US. Id. ¶ 1. According to Mr. Ruble, although
employed by SAC-US, he “regularly” provides legal services to both its
corporate parent SAC and its subsidiary, Reflectix. Id. For example,
settlement negotiations in the District Court patent infringement action have
been attended by attorneys from the firm of Norton Rose Fulbright US LLP,
Mr. Tokarski as President of Reflectix, and Mr. Ruble and Ira Lakritz, both
attorneys employed by SAC-US. Id. ¶¶ 4–5. Mr. Ruble states that he
considers such common representation permissible “because these clients
are generally aligned in interest.” Id. ¶ 1.
1. Preparation and Filing of the Instant Petitions
According to Reflectix and its declarants, the preparation of the
instant Petitions began in March of 2014. Paper 15, 4; Ex. 4001
(Declaration of Nathan J. Rees, lead counsel for Reflectix) ¶ 2; Ex. 4002 ¶ 7.
Preparation of the Petitions was managed by Norton Rose Fulbright

with the Board’s Rules. 37 C.F.R. § 42.63(c) (“Each party's exhibits must
be uniquely numbered sequentially in a range the Board specifies. For the
petitioner, the range is 1001–1999, and for the patent owner, the range is
2001–2999.”). While the Board could require Reflectix to re-file its Exhibits
with proper numbers, and file corrected Papers referring to these renumbered
exhibits, we exercise our discretion not to do so, given the fact that none of
the five Petitions are proceeding into trial.

IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

6

attorneys, with the assistance of Messrs. Ruble and Lakritz, in-house counsel
for SAC-US. Ex. 4001 ¶ 2; Ex 4002 ¶ 2. SAC-US “provided” the services
of Messrs. Ruble and Lakritz to Reflectix, and SAC-US also funded the
preparation of the instant Petitions. Ex. 4002 ¶¶ 2–3. Mr. Ruble testifies
that Reflectix was “willing and eager” to file the Petitions drafted by these
attorneys. Id. ¶ 11.
Initially, the Petitions were drafted with SAC as Petitioner and sole
RPI. Ex. 4001 ¶ 3. Shortly before filing, in approximately September 2014,
Norton Rose Fulbright attorneys discussed with the SAC-US attorneys the
identification of RPI in the Petitions, and determined that Reflectix should
be named as Petitioner and sole RPI. Id. ¶ 5. Reflectix states that “the
conduct of the parties throughout the present dispute” was considered
“particularly determinative” of the RPI inquiry, especially the fact that SAC
had been dismissed from the District Court patent infringement action,
leaving Reflectix as the only member of the Sealed Air corporate family
charged with infringing the patents. Reply 3.
2. Powers of Attorney Filed in These Proceedings
As required by our Rules, Reflectix filed Powers of Attorney along
with the Petitions, designating Nathan J. Rees and Wayne S. Livingstone as
counsel. 37 C.F.R. § 42.10(b); Paper 2. The Powers of Attorney are signed
by Mr. Tokarski as President of Reflectix, however the documents state that
“Petitioner Sealed Air Corporation hereby appoints [Messrs. Rees and
Livingstone] as attorneys to represent the undersigned.” Paper 2 (emphasis
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

7

added). Upon inquiry by the Board,
6
Reflectix represented that the inclusion
of SAC on the Powers of Attorney was an “inadvertent clerical error” that
arose out of the fact that, as discussed above, SAC was named as Petitioner
and sole RPI when the Petitions were initially prepared. Paper 15, 4–5.
Once the determination had been made to name Reflectix as Petitioner, the
drafted Powers of Attorney were never updated to reflect the change.
Ex. 4001 ¶ 7.
II. ANALYSIS OF REAL PARTY IN INTEREST
The America Invents Act (“AIA”) is unequivocal: a petition for inter
partes review “may be considered only if” it identifies all RPIs. 35 U.S.C.
§ 312(a)(2) (emphasis added). This identification must be made as part of a
petitioner’s mandatory notices, required to be filed as a part of the petition.
37 C.F.R. § 42.8(a)(1). The only provision made in our Rules for
subsequently updating the identification of RPI is “within 21 days of a
change in the information,” i.e., a change in the status of a party as RPI.
37 C.F.R. § 42.8(a)(3). Otherwise, we have held that correcting the
identification of RPI listed in a petition results in a loss of the petition’s
filing date, with a new filing date assigned as of the date the RPI

6
After determining that the Powers of Attorney appear to contain an error,
the Board asked the parties to brief “what effect, if any, this has on the
Board’s ability to consider the Petitions.” Paper 13, 2. Because we
determine Reflectix’s failure to name all RPIs prevents us from considering
the Petitions, we need not reach this issue.
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

8

identification is corrected. See Askeladden LLC v. McGhie, Case IPR2015-
00122, slip op. at 15 (PTAB Mar. 6, 2015) (Paper 30). In cases where the
newly-assigned filing date would be outside the one-year period for filing a
petition defined in 35 U.S.C. § 315(b), we have found failure to identify all
RPIs results in denial of the petition. See ZOLL Lifecor Corp. v. Philips
Elec. North America Corp., Case IPR2013-00609, slip op. at 16–17 (PTAB
Mar. 20, 2014) (Paper 15).
“The Board relies on petitionerʼs identification of the RPI to
determine conflicts of interest for the Office, the credibility of evidence
presented in a proceeding, and standing of a party that previously has filed a
civil action involving a patent for which an [inter partes review] is
requested.” GEA Process Eng’g. Inc. v. Steuben Foods, Inc., Case IPR2014-
00041, slip op. at 24 (PTAB Feb. 11, 2015) (Paper 140). We have held that
determination of whether a Petition identifies all RPIs is a “threshold issue,”
on which Petitioner bears the burden of persuasion. See Atlanta Gas Light
Co. v. Bennett Regulator Guards, Inc., Case IPR2013-00453, slip op. at 7–8
(PTAB Jan. 6, 2015) (Paper 88).
Our Practice Guide explains that an RPI, as used in the AIA trial
context, “is the party that desires review of the patent. Thus, the ‘real party-
in-interest’ may be the petitioner itself, and/or it may be the party or parties
at whose behest the petition has been filed.” Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). The determination of
whether a party is an RPI is a “highly fact-dependent question” (id.), in
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

9

which the focus is on the party’s relationship to the inter partes review
pending before the Board, and the degree of control the party can exert over
the proceeding. See Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., Case
IPR2014-01288, slip op. at 11 (PTAB Feb. 20, 2015) (Paper 13).
While per se rules are inappropriate in the RPI context due to its
highly fact-dependent nature, prior decisions of the Board are instructive as
examples of situations in which a party should be considered an RPI. For
example, when a petitioner is, “at most, a ‘nominal plaintiff’ with ‘no
substantial interest’ in [the inter partes review] apart from those of its
client,” the Board has considered the client to be an RPI. See RPX Corp. v.
VirnetX Inc., Case IPR2014-00171, slip op. at 9 (PTAB July 14, 2014)
(Paper 57). We have also found a nonparty that paid the petitioner’s legal
fees for conduct of the inter partes review to be an RPI. GEA Process
Eng’g, Paper 140, slip op. at 21. In other situations, the Board has found
that the relationship between a nonparty parent corporation and the
subsidiary petitioner blurred the lines of corporate separation such that the
parent could control conduct of the inter partes review, thus making the
parent an RPI. ZOLL Lifecor Corp. v. Philips Elec. N. Am. Corp., Case
IPR2013-00606, slip op. at 8–11 (PTAB Mar. 20, 2014) (Paper 13); see
Zerto, Inc. v. EMC Corp., Case IPR2014-01254, slip op. at 10–14 (PTAB
Feb. 12, 2015) (Paper 32).
In each of these cases, central to the Board’s determination was that a
party other than the named petitioner was controlling, or capable of
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

10

controlling, the proceeding before the Board. While complete control is not
required, “if a nonparty can influence a petitioner’s actions in a proceeding
before the Board, to the degree that would be expected from a formal
copetitioner, that nonparty should be considered an RPI to the proceeding.”
Aruze Gaming Macau, Paper 13, slip op. at 12.
A. Sealed Air Corporation (US) is a Real Party in Interest
The undisputed record establishes that SAC-US is an RPI to these
proceedings, and thus, should have been identified by Reflectix in the
Petitions. The totality of the facts before us supports this conclusion, but the
following facts stand out: the payment of legal fees and provision of legal
support for preparation of the instant Petitions by SAC-US to Reflectix; and
the blurring of the lines of corporate separation between the companies.
As discussed above, Mr. Ruble admits that SAC-US “funded the
preparation of” the instant Petitions. Ex. 4002 ¶ 3. This reasonably can be
interpreted to mean that the entirety of the legal fees billed by Norton Rose
Fulbright, as well as the Office’s filing fees, were paid by SAC-US. The
Board has concluded previously that “entirely funding the proceedings”
gives the funding party the opportunity to control those proceedings. See
GEA Process Eng’g, Paper 140, slip op. at 21.
Furthermore, not only did SAC-US fund the preparation of the instant
Petitions, it provided two attorneys to represent Reflectix and assist outside
counsel in preparing the Petitions. The record does not reflect that any
officer or employee of Reflectix had input into the content of the Petitions.
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

11

Indeed, for seven months, the Petitions were prepared—and, presumably, the
legal strategy, including the asserted grounds of unpatentability,
developed—with SAC as the intended Petitioner. The only reasonable
conclusion from these facts is that SAC-US maintained substantial control
over the content of the Petitions through the involvement of its in-house
counsel and its payment of legal fees.
The fact that SAC-US employees “regularly” provide legal services to
Reflectix, and consider the clients “generally aligned in interest” (see
Ex. 4002 ¶ 1), also supports the conclusion that the lines of corporate
separation between SAC-US and Reflectix are not maintained exactingly.
Furthermore, all but two corporate officers of Reflectix have high-ranking
(Vice President or higher) positions within SAC-US and/or SAC. Id. ¶ 5.
The President of Reflectix, Mr. Tokarski, is an employee of SAC-US. Reply
2 n.1. While this arrangement may be, in the words of Mr. Ruble, “primarily
for employee benefits reasons” (Ex. 4002 ¶ 6), it is telling that Mr.
Tokarski—acting as President of Reflectix—signed, without noticing,
Powers of Attorney appointing outside counsel to represent “Sealed Air
Corporation.”
When the intertwined nature of two corporations demonstrates that “it
is difficult for both insiders and outsiders to determine precisely where one
ends and the other begins, there exists an actual measure of control or
opportunity to control.” Zerto, Paper 32, slip op. at 10. Even if it were not
clear from the preparation and funding of the Petitions that SAC-US has
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

12

substantial control over these proceedings, the blurring of the boundary
between the corporations gives SAC-US the clear opportunity to control
them.
Reflectix argues that its determination that it is the sole RPI to these
proceedings was correct, because prior to the filing of the Petitions,
Promethean agreed to a stipulated dismissal of SAC from the District Court
patent litigation. Reply 5. Reflectix also points out that a subsequent
complaint on a related Promethean patent named only Reflectix as a
defendant. Id. These arguments, however, are unavailing, primarily because
they focus on the conduct of the District Court action and the relationship
between Reflectix and SAC-US as parties, not the relationship of Reflectix
and SAC-US to the present proceedings.
“RPI is the relationship between a party and a proceeding; RPI does
not describe the relationship between parties.” Aruze Gaming Macau, Paper
13, slip op. at 11. The proper RPI analysis, therefore, focuses on the
relationship of SAC-US to these proceedings, and the degree to which SAC-
US exercised, or could have exercised, control over the Petitions. Id. at 16.
As such, the fact that SAC-US was dismissed from the District Court
infringement action, and was not named as a defendant in a subsequent
action, is of no moment.
We determine that SAC-US is an RPI to these inter partes review
proceedings, and should have been identified in the Petitions. Unless the
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

13

Petitions can be corrected to include SAC-US, we cannot consider them.
35 U.S.C. § 312(a).
B. Reflectix Cannot Correct its RPI Identification Without Losing its
Filing Date
Reflectix argues that, even if it was incorrect in its determination that
SAC-US is not an RPI, its error was in good faith and, therefore, good cause
exists to permit correction of the RPI identification without altering the
filing date of the Petitions. Reply 5–7. As noted above, although petitioners
are required to include mandatory notices identifying all RPIs when the
petition is filed, our Rules permit late action to be “excused on a showing of
good cause or upon a Board decision that consideration on the merits would
be in the interests of justice.” 37 C.F.R. § 42.5(c)(3). Reflectix argues that
the requirement that a petition name all RPIs to receive a filing date is
regulatory, not statutory, and as such may be waived by the Board. Reply 6
(citing 37 C.F.R. §§ 42.106, 42.5(b)).
Promethean disputes that the requirement of RPI identification is
waivable, arguing that correction to RPI identification is not permitted in
any circumstances without loss of the petition’s filing date. Paper 14, 12
n.10 (citing Petroleum Geo-Services, Inc. v. WesternGeco, LLC, Case
IPR2014-00678, slip op. at 6 (PTAB Aug. 12, 2014) (Paper 23)). We need
not determine whether Promethean is correct, or whether in some cases,
good cause can excuse a late identification of all RPIs. Reflectix has not
established that any such good cause exists in this case.
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

14

First, we note that Reflectix’s incorrect determination of RPI did not
arise out of some mistake of fact; rather, the briefing shows that Reflectix
misunderstood the law as it applies to the RPI determination. Even as late as
March of this year, Reflectix argued in its Additional Briefing that our “Trial
Practice Guide is not clear on the amount of control that is necessary to
cause a party to rise from the level of privy to the level of a[n] RPI.” Paper
15, 10 (emphasis added). This statement evinces several fundamental
misunderstandings of the distinction between RPIs and privies: the concepts
do not differ based on the “amount of control;” a party does not “rise” from
a privy to an RPI; and the fact that a party is an RPI to a proceeding does not
rule out the possibility that they are also in privity with a party. See Aruze
Gaming Macau, Paper 13, slip op. at 13 (“[i]n contrast to the RPI inquiry,
which focuses on a party’s relationship to a proceeding, the privity inquiry
focuses on the relationship between parties”) (citing Int’l Nutrition Co. v.
Horphag Research, Ltd., 220 F.3d 1325, 1329 (Fed. Cir. 2000)).
Nor is it an excuse that, as Reflectix alleges, the Board’s law of RPI is
“developing and there is little guidance in the form of precedential (or even
‘informative’) opinions from the PTAB in this area” or that our Trial
Practice Guide allegedly “provides little guidance in distinguishing what
actions cause a party to be a privy versus what causes the party to be a[n]
RPI.” Paper 15, 5, 8. We disagree that the Trial Practice Guide provides
little guidance, as it devotes over a page of the Federal Register to discussing
RPI and privity, and cites to precedent including the Supreme Court decision
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

15

in Taylor v. Sturgell. See 77 Fed. Reg. at 48,759 (citing 553 U.S. 880
(2008)). In any event, even if our precedent is “developing,” several Board
decisions concerning RPI issued while Reflectix still had the opportunity to
correct its Petition without encountering a 35 U.S.C. § 315(b) statutory bar,
7

and which should have given Reflectix cause to re-evaluate its RPI
designation. See, e.g., ZOLL Lifecor, IPR2013-00609, Paper 13 (entered
Mar. 20, 2014); RPX, Paper 49 (entered June 5, 2014). Reflectix never
asked to correct its RPI identification, however, until Promethean raised the
issue.
Reflectix also argues that, as the RPI inquiry is a fact-intensive one
upon which “reasonable persons, acting in good faith, may disagree,” then
its incorrect determination regarding SAC-US should be excused. Paper 15,
10. While this argument may have merit in situations where the RPI
question is a close one, that is not the case before us. Reflectix’s incorrect
RPI determination was not objectively reasonable, and cannot support good
cause justifying late action. As discussed above, the facts overwhelmingly
lead to the determination that SAC-US is an RPI that should have been
named in the Petitions.
Second, Reflectix asks us to excuse its incorrect RPI identification
because there would have been no 35 U.S.C. § 315(b) statutory bar against

7
Reflectix admits that the earliest date it was served with a complaint
alleging patent infringement was January 10, 2014 (Reply, 2); therefore, it
could have corrected its RPI identifications without encountering a § 315(b)
bar until January 10, 2015.
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

16

SAC-US when the Petitions were filed. Id. at 4. Furthermore, Reflectix
concedes that SAC-US is a privy of Reflectix, and thus would be barred
from filing successive petitions under 35 U.S.C. § 315(e). Id. at 6. Reflectix
argues, therefore, that it gained nothing by omitting the identification of
SAC-US from its Petitions. Id.
While we recognize the absence of a statutory bar when the Petitions
were filed, the statutory bars of 35 U.S.C. § 315 are not the only reasons RPI
identification is required; the identification is also necessary so that the
Board can avoid conflicts of interest and assess the credibility of evidence
presented in a proceeding. See GEA Process Eng’g., Paper 140, slip op. at
24. We also note that the admission of privity between Reflectix and SAC-
US was not made until after Promethean had raised the RPI question in its
Preliminary Response. Reply 4. There is, therefore, no way to know
whether a 35 U.S.C. § 315(e) bar on subsequent petitions would have been
conceded if Promethean had never raised the issue. In any event, while
these facts may tend to show the absence of bad faith on the part of
Reflectix, they do not show that its incorrect RPI identification was
objectively reasonable.
Third, Reflectix argues that it “has addressed the RPI issue in the most
forthcoming manner possible,” in contrast to cases such as GEA Process
Engineering where the Petitioner resisted discovery on RPI issues. Paper
15, 11. While we commend Reflectix for its candor in these proceedings,
we note that a duty of candor and good faith is required of all participants in
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

17

inter partes reviews. 37 C.F.R. § 42.11. Furthermore, Reflectix’s good faith
in addressing RPI once the issue was raised by Promethean does not bear on
whether the original failure to name all RPI was reasonable and, therefore,
excusable.
Finally, Reflectix contends that permitting correction of RPI without
affecting its filing date would be in the interests of justice. Reflectix notes
that, while a petitioner who fails to identify all RPIs may lose its only chance
to challenge a patent’s validity, no sanction of equal measure is invoked
against a patent owner who fails to name all RPIs. Paper 15, 14; Reply 7.
We find this argument unpersuasive, as it assumes that Congress did not
intend such a result. The AIA contains a direct sanction against petitions
that do not identify all RPIs, stating unambiguously that the petitions may
not be “considered.” 35 U.S.C. § 312(a)(2). If it is inequitable that no
similar sanction is provided for patent owners, that is an issue for Congress,
not the Board, to remedy.
Reflectix also notes that, under Federal Rule of Civil Procedure
17(a)(3), an action in District Court may not be terminated for failure to
include an RPI until there is a chance to ratify, join, or substitute in that RPI.
Paper 15, 15. This does not mean, however, that the interests of justice
require the same accommodation in an inter partes review. The Board has
not adopted the Federal Rules of Civil Procedure, and there is no reason to
believe that Congress intended to provide a rule with the flexibility of FRCP
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

18

17(a)(3) when it enacted the unambiguous and strict provisions of 35 U.S.C.
§ 312(a).
For the foregoing reasons, we determine that even if the AIA and our
Rules permit a petitioner to correct its identification of RPIs without
affecting the petition’s filing date, we would not permit such correction here.
Reflectix has not provided a sufficient showing of good cause or otherwise
convinced us that it would be in the interests of justice to allow correction of
the RPIs identified in its Petition without loss of the original filing date.
III. CONCLUSION
The instant Petitions fail to identify all RPIs and, thus, cannot be
considered under 35 U.S.C. § 312(a). Correction of the RPI identification
with a change in filing date would be futile, as the Petitions would be barred
under 35 U.S.C. § 315(b).
IV. ORDER
It is hereby ORDERED that the Petitions (IPR2015-00039, Paper 1;
IPR2015-00042, Paper 2; IPR2015-00044, Paper 1; IPR2015-00045, Paper
2; IPR2015-00047, Paper 1) are denied, and no trial is instituted.
IPR2015-00039 (Patent 7,935,410 B2)
IPR2015-00042 (Patent 7,935,411 B2)
IPR2015-00044 (Patent 8,327,601 B2)
IPR2015-00045 (Patent 8,343,614 B2)
IPR2015-00047 (Patent 8,221,871 B2)

19

FOR PETITIONER:

Nathan J. Rees
Wayne Livingstone
Fulbright & Jaworski LLP
nate.rees@nortonrosefulbright.com
wayne.livingstone@nortonrosefulbright.com

FOR PATENT OWNER:

Joshua Wyde
The Law Office of Joshua S Wyde
jwyde@wydelegal.com

Shaukat Karjeker
Carstens & Cahoon, LLP
skarjeker@cclaw.com

Danny L. Williams
Brian K. Buss
Matthew R. Rodgers
Christopher N. Cravey
David K. Wooten
Drew Kim
Leisa Talbert Peschel
Williams Morgan, P.C.
danny@wmalaw.com
bbuss@wmalaw.com
mrodgers@wmalaw.com
cravey@wmalaw.com
dwooten@wmalaw.com
dkim@wmalaw.com
lpeschel@wmalaw.com