Under 35 U.S.C. §§ 315(c) and 325(c), petitioners may file a motion to join another instituted proceeding. The one-year time bar of 35 U.S.C. §§ 315(b) and 325(b) does not apply to joinder.
Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 (PTAB Apr. 24, 2013). In determining whether to grant a motion for joinder, the Board considers factors such as the timing and impact of joinder on the trial schedule, cost, and whether briefing and/or discovery may be simplified to minimize trial impact. The Board held that a party seeking joinder should identify whether any new grounds of unpatentability are being raised in the concurrently-filed petition.
Sony Corp. v. Network-1 Sec. Solutions, Inc., IPR2013-00386, Paper 16 (PTAB July 29, 2013) (Paper 16). The Board held that joinder in an IPR may be warranted in certain circumstances, but is not required in any. “The Board will determine whether to grant joinder on a case-by-case basis, taking into account the particular facts of each case, substantive and procedural issues, and other considerations.”
Fifth Third Bank v. Stambler, IPR2014-00244, Paper 4 (PTAB Dec. 17, 2013). Petitioner’s motion for joinder was denied because the parties involved in the earlier proceeding to which petitioner sought to join reached a settlement. Thus, the Board terminated the earlier proceeding before the Board issued an institution decision in the earlier proceeding. The Board noted that petitioner was time barred and waited to file its petition depending on whether the earlier proceeding had been instituted. By doing so, petitioner took a risk that the earlier proceeding would not be instituted. Under 35 U.S.C. § 315(c), joinder is only permitted to a previously instituted case.
Enzymotec Ltd. v. Neptune Techs. & Bioresources, Inc., IPR2014-00556, Paper 19 (PTAB July 9, 2014). A motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified.
Target Corp. v. Destination Maternity Corp., IPR2014-00508, Paper 28 (PTAB Feb. 12, 2015). In a decision on rehearing, an expanded panel of the Board narrowly (4-3) decided to allow “issue joinder” for the same petitioner. In “issue joinder,” the petitioner seeks to join, under 35 U.S.C. § 315(c), an earlier-filed petition filed by the same petition with different grounds of challenge than those presented in the later petition. The expanded panel granted petitioner’s request for rehearing of the Board’s original decision to deny institution and joinder of the later-filed petition, which was filed after the one-year bar date of § 315(b). The Board interpreted §315(c)’s provision of “any person who properly files a petition under section 311” as permitting issue joinder by the same petitioner.
Samsung Electronics Co. Ltd. et al. v. Affinity Labs of Texas, LLC, IPR2015-00820, Paper 12 (PTAB May 15, 2015). The Board denied petitioner’s motion for joinder on the basis that petitioner had used prior institutions decisions as a road map to present new challenges. Petitioner had previously filed three petitions against the same patent with varied challenges. The Board instituted trials based on all three petitions but not for some of the challenged grounds. The Board denied joinder of the new, fourth petition with one of the earlier petitions because petitioner did not persuasively explain why, using reasonable efforts, it could not have found the newly relied-upon reference. The Board determined that petitioner sought to use a prior institution decision as a guide to remedy deficiencies in the earlier petition. The Board held that allowing petitioner another chance to argue the unpatentability of the challenged claims would not lead to the just, speedy and inexpensive resolution of the instituted proceedings. Thus, the additional burden on the Board and patent owner was not justified.
Atoptech, Inc. v. Synopsys, Inc., IPR2015-00760, Paper 14 (PTAB July 21, 2015). The Board denied petitioner’s motion for joinder of a second petition with a trial instituted in response to a first petition. The second petition was filed by the same petitioner against two claims for which the Board denied institution in response to the first petition, based on the Board’s disagreement with petitioner’s proposed claim construction. The Board determined that petitioner used the institution decision as a guide to present new arguments and new reasoning to address the Board’s claim construction in the first institution decision. The Board disagreed with petitioner’s arguments that it could have not foreseen the Board’s claim construction in the first institution decision, and determined that petitioner should not be permitted a second bite at the apple because the second petition simply presents arguments that reasonably could have been made in the earlier petition but were not. “[P]ermitting second chances without constraint undermines judicial efficiency by expending the Board’s limited resources on issues that were not presented adequately the first time around.”
Zhongshan Broad Ocean Motor Co. v. Nidec Motor Corp., IPR2015-00762, Paper 16 (PTAB Oct. 5, 2015). In a decision granting rehearing of the Board’s denial of institution and joinder, an expanded panel (3-2) determined that petitioner could join an earlier petition previously filed by the same petitioner despite the later petition being filed after the one-year time bar of § 315(b). The Board determined that § 315(c) permits the joinder of any person who properly files a petition under § 311, including a petitioner who is already a party to an earlier instituted IPR. § 315(c) “encompasses both party joinder and issue joinder, and, as such, permits joinder of issues, including new grounds of unpatentability.” The Board previously denied the challenge presented in the later petition because petitioner did not submit the required affidavit concerning a certified translation of a foreign document. The Board indicated that “[t]he public interest in securing the just, speedy, and inexpensive resolution of every proceeding would be served in this case more fully by considering the merits of the asserted ground of unpatentability… rather than by denying consideration for reasons tied to Petitioner’s previous failure to submit the requisite attesting affidavit.”
ZTE Corp. v. Adaptix, Inc., IPR2015-01184, Paper 12 (PTAB Oct. 12, 2015). A petition filed more than one year after service of a complaint is time-barred under § 315(b) if the motion for joinder is denied. The mere accompaniment of a request for joinder with a petition does not nullify the § 315(b) time bar.
Qualcomm Inc. v. Bandspeed, Inc., IPR2015-00314, Paper 21 (PTAB Nov. 16, 2015). The Board permitted joinder of petitioner to a previously instituted IPR proceeding despite the fact that, while the parties were briefing the motion for joinder, patent owner settled with all petitioners in the previously instituted IPR proceeding. Patent owner argued that, absent joinder, petitioner in the present IPR proceeding would be time barred, and that joinder should be denied because it would require significant adjustment to the trial schedule. The Board disagreed with patent owner’s arguments, indicating that petitioner agreed to follow the trial schedule from the previously instituted proceeding and that petitioner did not present any new challenges on patentability. The Board determined that granting joinder would not discourage settlement in multi-defendant cases.
LG Electronics, Inc. v. ATI Technologies ULC, IPR2015-01620, Paper 10 (PTAB Feb. 2, 2016). The Board denied petitioner’s motion for joinder because petitioner did not demonstrate why it could not have presented the new challenges in an earlier petition. After petitioner filed a first petition challenging two claims, the Board instituted trial for one of the claims, but not the second claim. After institution, petitioner filed a second petition with modified grounds of unpatentability for the second claim. The Board determined that joinder was not appropriate because the second petition used the earlier institution decision as a guide to remedy deficiencies in the first petition. Although there may be efficiencies to gain from addressing the same claims in an IPR that are at issue in pending district court litigation, permitting second chances without constraint undermines judicial efficiency by expending the Board’s resources on issues that were not adequately presented the first time.
Intermix Media, LLC v. Bally Gaming, Inc., CBM2015-00154, Paper 11 (PTAB Feb. 19, 2016). The Board denied institution for all grounds of challenge, and petitioner requested rehearing. Petitioner asked the Board if it could file a motion for joinder while the rehearing was pending. The Board instructed petitioner to wait to file its motion for joinder pending the outcome of the rehearing decision. In the event that rehearing is granted and the proceeding is instituted, petitioner may then again seek authorization to file a motion for joinder.
Lupin Ltd. v. Seju Pharmaceutical Co., Ltd., IPR2015-01871, Paper 13 (PTAB Jan. 25, 2016). The Board authorized joinder for a later-filed petition that presented substantially the same arguments and evidence as an earlier petition that was instituted by the Board. Patent owner opposed joinder on the basis that the later petitioner relied on a different expert than in the earlier proceeding. The later petitioner agreed to take a back-seat role and rely on the testimony of the earlier petitioner’s expert, and to only take a primary role if the earlier petitioner ceased to participate. The Board authorized joinder, indicating that the interests of efficiency and speed in the resolution of the proceeding outweighed any prejudice to patent owner.
Ubisoft, Inc. v. Uniloc USA, Inc., IPR2016-00414, Paper 16 (PTAB June 2, 2016). The Board denied a motion for joinder and the associated petition because the instituted proceeding that petitioner sought to join had terminated. The associated petition was denied as being time barred under 35 U.S.C. § 315(b). In addition, the Board denied the petition on the basis that the asserted challenges could have been presented in the earlier petition.