Addressing a petitioner’s untimely Updated Mandatory Notice following a merger, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a patent owner’s motion to terminate an inter partes review (IPR) proceeding, finding that an untimely filing may be excused by the Board if the petitioner shows good cause and the patent owner suffers no prejudice or delay in justice.  Valeo North America, Inc. v. Magna Electronics, Inc., Case Nos. IPR2014-00220; -0021; -0022; -0027 (PTAB, Jan. 8, 2015) (Clements, APJ).

In the course of an IPR, one of original petitioners, Valeo, merged with another entity to become Valeo North America.  However, Valeo North America failed to update its Mandatory Notice to accurately list the real parties of interest after the merger.  As Valeo North America was not listed as a real party of interest, the patent owner moved to terminate the proceedings.  The petitioner responded that the motion should be denied as the identification of real-parties-in-interest was proper at the time the petitions were filed; post-filing changes to real-party-in-interest information is governed only by regulation, not by statute; the Board has discretion to waive or suspend regulations, and to accept or excuse late-filed papers; and the present circumstances justify acceptance of the petitioner’s Updated Mandatory Notice.  The Board agreed with the petitioner and determined that the late filing of the Updated Mandatory Notice did not result in any prejudice or delay and the patent owner failed to identify any prejudice from the delay.  Thus, the Board found that consideration of the petition on the merits would be in the interests of justice and denied the motion to terminate the proceedings.