Corning Optical Communications rf, LLC v. PPC Broadband, Inc., page 68, IPR2014-00440 (Patent 8,597,041 B2) (PTAB, 8/18/2015)(Designated precedential 10/28/2025)

[Rick Neifeld]

This opinion is designated precedential 10 years after its issuance.

From the opinion, I found this reset of the filing date to when a party complies with its RPI disclosure duty relevant.

 ...Petitioner disagrees with Patent Owner’s assertion that § 42.106 requires compliance with 37 C.F.R. § 42.8 to obtain a filing date. Opp. 24. We disagree. Rule 42.106 states that an IPR petition “will not be accorded a filing date until the petition satisfies all of the following requirements: (1) Complies with § 42.104. . . .” 37 C.F.R. § 42.106(a)(1). Rule 42.104, in turn, states “[i]n addition to the requirements of §§ 42.6, 42.8, 42.22, and 42.24, the petition must set forth” grounds for standing and an identification of each challenge. 37 C.F.R. § 42.104. A straightforward reading of the language of § 42.104 indicates that this rule requires compliance with, among other things, § 42.8, which states mandatory notices that “must be filed,” including “each real party-in-interest for the party.” 37 C.F.R. § 42.8(b)(1). Although we recognize that the above-mentioned rules are regulatory, not statutory, and, therefore, may be waived by the Board (37 C.F.R. § 42.5(b)), we are not persuaded that sufficient reason exists to do so in these cases, especially in view of 35 U.S.C. § 312(a)(2). See also Reflectix, Case IPR2015-00039, slip. op at 13–18 (Paper 18) (explaining why Petitioner “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”) (id. at 18). Here, a new filing date necessarily would be more than one year after the date on which Petitioner was served with a complaint alleging infringement of the challenged patents, making the Petitions time-barred under 35 U.S.C. § 315(b). Because we cannot consider the Petitions, and should not have considered them at the time of institution, the appropriate remedy is to grant Patent Owner’s Motions to Dismiss, terminate the instant proceedings, and vacate our Decisions on Institution. [Corning Optical Communications rf, LLC v. PPC Broadband, Inc., paper 68, IPR2014-00440 (Patent 8,597,041 B2) (PTAB, 8/18/2015)(Designated precedential 10/28/2025).]

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Rick Neifeld, J.D., Ph.D.

Neifeld IP Law PLLC

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