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Petition Denied For Failing To Name Real Party-In-Interest: Inter Partes Review

In Paramount Home Entertainment Inc. v. Nissim Corporation (Case IPR2014-00961), the PTAB addressed the issue of whether the IPR petition failed to identify a real party-in-interest and was, as a result, non-compliant.  More specifically, the Board addressed whether Paramount Pictures Corporation, which was the parent entity for the petitioner, Paramount Home Entertainment Inc., and was not named as a real party-in-interest, exercised or could have exercised control over the participation of Paramount Home Entertainment Inc. in the dispute with Nissim Corporation over U.S. Patent No. 6,304,715.

The Board ultimately determined that Paramount Pictures Corporation was in fact an unnamed real party-in-interest and, on this basis, denied the IPR petition.  To support its finding that Paramount Pictures Corporation exercised enough control over Paramount Home Entertainment Inc. to be considered a real party-in-interest, the Board stated the following in its decision: 

“Patent Owner’s evidence shows that a vice president of Paramount Pictures Corporation (1) responded to Patent Owner’s license offer letter without referring Patent Owner to Petitioner Paramount Home Entertainment Inc.; (2) indicated that ‘Paramount and its attorneys’ engaged in numerous communications with Patent Owner; (3) referred to the counsel providing representation in this proceeding and the declaratory judgment actions as ‘my counsel’; and (4) travelled to the office of Patent Owner’s attorney to view Patent Owner’s settlement agreement with Warner Brothers.   These actions suggest an involved and controlling parent corporation representing the unified interests of itself and Petitioner Paramount Home Entertainment Inc.  We are not directed to any evidence showing that Petitioner Paramount Home Entertainment Inc., or its attorneys, took any action independent from its parent, Paramount Pictures Corporation, regarding the subject matter of this dispute prior to filing the Petition.” (footnote omitted) (citations omitted) (internal quotation marks omitted).

Additionally, the Board noted that, because Paramount Pictures Corporation was a co-plaintiff in one of the declaratory judgment actions against the ‘715 patent, Paramount Pictures Corporation had a “documented interest in invalidating the ‘715 patent.”  Moreover, the Board further noted that Paramount Pictures Corporation and Paramount Home Entertainment Inc. were both being represented by the same law firm in one of the declaratory judgment actions against the ‘715 patent, while that same law firm was also representing Paramount Home Entertainment Inc. in the IPR proceeding.

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