Archive for the ‘Joinder of AIA Proceedings’ Category

Board Limits Multiple IPR Challenges in Samsung Electronics v. Rembrandt Wireless Technologies

Monday, June 22nd, 2015

June 22, 2015

Rembrandt Wireless Technologies sued Samsung and Research in Motion for infringement of  U.S. Patent 8,457,228 in June 2013.  The ‘228 patent relates to data communications, and in particular to a data communication system in which a plurality of modems use different types of modulation in a network.

In June of 2014, Samsung filed six IPR petitions to challenge various claims of the ’228 patent.  (IPR2014-00889 to -00893 and -00895.)   Only half of Samsung’s six petitions were instituted for trial, but claim 21 was the only claim of the ’228 patent in the district court litigation that was not instituted for trial in the PTAB.  (Rembrandt also asserted U.S. Patent 8,023,580, which was also the subject of six IPR petitions, and had additional claims not instituted for trial.)

In the original IPR challenge of claim 21 (IPR2014-00892), Samsung unsuccessfully asserted a combination of “admitted prior art” (“APA”) with U.S. Patent 5,706,428 (“Boer”).  Samsung filed another IPR petition in January 2015 with a motion for joinder to IPR2014-00892 proposing new grounds for the unpatentability of claim 21.  (IPR2015-00555.)  These new grounds combined a new reference, U.S. Patent 5,537,398 (“Siwiak”), to the originally asserted prior art.  But on June 19, 2015, the Board again denied institution of trial of claim 21 and without considering Siwiak:

We do not reach the merits of Petitioner’s additional reasoning in the instant Petition as to why Petitioner asserts that the subject matter of claim 21 would have been obvious over the combination of APA, Boer, and Siwiak. Instead, for the reasons discussed below, we exercise our discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review in this proceeding.

35 U.S.C. § 325(d) states:

In determining whether to institute or order a proceeding under . . . chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.

To reject the second IPR petition, the Board integrated § 325(d) with 37 C.F.R.  § 42.1(b):  “[37 C.F.R. § 42] shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”  The Board explained its denial of the petition:

Petitioner [ ] presents no argument or evidence that Siwiak was not known or available to it at the time of filing IPR ’892. In fact, Petitioner applied Siwiak in proposed grounds of rejection against claim 21 of the ’228 patent in another petition filed the same day as that in the IPR ’892 proceeding. See IPR2014-00889, Paper 2 at 58–60.  On this record, we exercise our discretion and “reject the petition” because “the same or substantially the same prior art” previously was “presented to the Office” in the IPR ’892 proceeding. [cites omitted]

Petitioner is requesting, essentially, a second chance to challenge the claims. We, however, are not persuaded that a second chance would help “secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). Permitting second chances in cases like this one ties up the Board’s limited resources; we must be mindful not only of this proceeding, but of “every proceeding.”  [cites omitted]

In this proceeding, however, we are not apprised of a reason that merits a second chance. Petitioner simply presents arguments now that it could have made in IPR ’892, had it merely chosen to do so.  In view of the foregoing, and especially in light of the fact that, barring joinder, this petition is time-barred under 35 U.S.C. § 315(b), we exercise our discretion [to deny the petition].

To conserve its limited resources, the Board must be more selective in petitions it will consider.  Petitioners must provide reasons why the Board should consider new grounds proffered in a subsequent petition, including why the new grounds could not have been presented in an earlier-filed petition.

Target Wins Rehearing of IPR Joinder Decision with Expanded Panel

Friday, February 13th, 2015

Last fall, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to require joinder requests by a non-party to an ongoing proceeding.  (Target Corp. v. Destination Maternity Corp., IPR2014-00508 and IPR2014-00509.)  Prior to that decision,  the Board had interpreted § 315(c) to allow for issue joinder by the petitioner of the original proceeding (see, for example Microsoft v. Proxyconn, IPR2013- 00109).  Of course, joinder was decided on a case-by-case basis, but had not previously been denied because the request was made by the petitioner of the original proceeding.

Target Corp. filed rehearing requests in both affected IPR proceedings in an effort to have the Board reconsider its interpretation of  35 U.S.C. § 315(c) with an expanded panel.  Target’s arguments are quite clearly stated in its Motion for Rehearing.  The Board granted Target’s rehearing request.  In a 4:3 decision,  the majority agreed that § 315(c) had been overly narrowly interpreted in the prior decision:

Turning now to the merits of the Request for Rehearing, the contention at the heart of Petitioner’s request for rehearing is that the denial of its Motion for Joinder was “based on an erroneously narrow interpretation of 35 U.S.C. § 315(c).” Paper 22, 1. We agree with Petitioner.

The majority read § 315(c)’s reference to “any person who properly files a petition under section 311” in conjunction with § 311’s requirement that the petition filer not be the patent owner, to broadly interpret § 315(c) to include any person except the patent owner.  This interpretation is at odds with the dissent’s analysis, which reads § 315(c)’s reference to “may join as a party” to literally require a new party for joinder:

The statute under which Petitioner seeks relief provides:

(c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.

35 U.S.C. § 315(c) (emphasis added). The statute does not refer to the joining of a petition or new patentability challenges presented therein. Rather, it refers to the joining of a petitioner (i.e., “any person who properly files a petition”). Id. Further, it refers to the joining of that petitioner “as a party to [the instituted] inter partes review.” Id. Because Target is already a party to the proceeding in IPR2013-00531, Target cannot be joined to IPR2013-00531.

While the majority decision does align with panel decisions on joinder prior to Target, one must ask whether this issue is finally resolved by this expanded panel decision.  For example, what happens if another panel does not follow this interpretation § 315(c)?  Or suppose this decision is appealed; would the Federal Circuit reverse a Board decision on joinder as it relates to institution given its recent interpretation of 35 U.S.C. § 314(d) in In re Cuozzo Speed Technologies? (“We conclude that § 314(d) prohibits review of the decision to institute IPR even after a final decision. . . . Section 314(d) provides that the decision is both ‘nonappealable’ and ‘final,’ i.e., not subject to further review. 35 U.S.C. § 314(d).”)  Would a Federal Circuit appeal have to be in the form of a petition for writ of mandamus?  If so, how would that square with the mandamus decisions in In re Dominion Dealer Solutions, LLC, 749 F.3d 1379, 1381 (Fed. Cir. 2014)(mandamus relief not available to challenge the denial of a petition for IPR) and in In re Proctor & Gamble Co., 749 F.3d 1376, 1378–79 (Fed. Cir. 2014)(mandamus relief not available to provide immediate review of a decision to institute IPR)?

 

 

Target Corp. Requests Rehearing of Denied IPRs by Expanded PTAB Panel

Friday, October 17th, 2014

October 17, 2014

Last month, the Patent Trial and Appeal Board (PTAB or Board) interpreted the IPR joinder provision, 35 U.S.C. § 315(c), to preclude joinder requests by an existing party to an ongoing proceeding.  (Target Corp. v. Destination Maternity Corp., IPR2014-00508 and IPR2014-00509.)  In these recent decisions, the Board decided that § 315(c) requires “party joinder” and not only “issue joinder.”  Interestingly, before this interpretation was announced the Board had allowed “issue joinder” without requiring joinder of a new party to the proceeding (Microsoft v. Proxyconn, IPR2013- 00109), and after this interpretation was announced at least one panel of the Board applied an analysis that did not appear to adopt this new interpretation (Microsoft Corp. v. Enfish LLC, IPRs 2014-00574, -00575, -00576, and -00577).

Last week, Target Corp. filed rehearing requests in both affected IPR proceedings in an effort to have the Board reconsider its interpretation of  35 U.S.C. § 315(c) with an expanded panel.  Target’s arguments are quite clearly stated in its Motion for Rehearing, some of which include:

  • The AIA was implemented for broad remedial purposes to improve patent quality and to provide a more efficient system for challenging patents that should not have issued.
  • These broad remedial purposes of the AIA empower the PTO to administer IPR proceedings in a way to reduce duplication of efforts and costs.
  • Laws pertaining to patent quality which are “remedial in nature, based on fundamental principles of equity and fairness” can be construed liberally.
  • The PTAB should interpret the joinder provision liberally to allow for consistency of prior decisions, and reduce gamesmanship in parallel district court litigation.

On that last point Target’s motion states:

Target’s Joinder Motion sets forth the unique facts of this case, which reveal that a significant prior art reference long known to the patent owner was withheld from Target in the parties’ parallel district court litigation until several weeks after Target’s one-year deadline under 35 U.S.C. § 315(b). (Paper 3, at 1-6.) Under the Board’s decision here, a patent owner in parallel litigation with a petitioner can readily subvert the purposes of the AIA, see supra Part II.A, and the IPR process by withholding any significant prior art it may be uniquely aware of, or additional asserted claims, until after the petitioner’s one-year deadline under § 315(b).

Of course, joinder motions cannot be filed any time after institution of the prior proceeding — they must be filed within a month after the date of institution of the IPR for which joinder is requested:

§ 42.122 Multiple proceedings and Joinder.

(b) Request for Joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested. The time period set forth in § 42.101(b) shall not apply when the petition is accompanied by a request for joinder.

However, in many cases the possibility of joinder of issues to a petitioner about a year after service of the lawsuit is still quite valuable to the petitioner and has been used to assert improved grounds and to attack newly asserted claims. (Microsoft v. Proxyconn, IPR2013- 00109.)

It will be interesting to see what the PTAB decides to do in Target’s IPR proceedings.  More importantly, it would be a great thing if this rehearing would result in  consistent joinder practice across panels in the future.

PTAB Applies “Issue Joinder” Analysis to Deny Microsoft’s IPR Joinder Requests

Thursday, October 2nd, 2014

October 1, 2014

The reader may recall that last week an expanded PTAB panel announced an interpretation of 35 U.S.C. § 315(c) that essentially ruled out a joinder request for a subsequent IPR petition made by an existing party to the instituted proceeding.  Target Corp. v. Destination Maternity Corp. (IPR2014-00508 and -00509.)  In Target, the Board adopted a “party joinder” interpretation of the § 315(c) IPR joinder statute that provided for new persons to join an instituted IPR, but not for joinder of new issues raised by the same petitioner.

This interpretation was a departure from an earlier interpretation of § 315(c) that allowed a party to the instituted IPR the ability to request joinder of a later-filed petition based on new issues (“issue joinder”).  As noted by the Board in Target:

In other decisions, the Board has granted joinder of an additional petition or proceeding (as opposed to an additional person) to an instituted inter partes review. See Ariosa Diagnostics v. Isis Innovation Ltd., Case IPR2012-00022 (PTAB Sept. 2, 2014) (Paper 66) (“Ariosa”); Samsung Elecs. Co. v. Virgina Innovation Scis., Inc., Case IPR2014-00557 (PTAB June 13, 2014) (Paper 10) (“Samsung”); Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109 (PTAB Feb. 25, 2013) (Paper 15); ABB Inc. v. Roy-G-Biv Corp., Case IPR2013-00286 (PTAB Aug. 9, 2013) (Paper 14); Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem, Case IPR2013-00327 (PTAB Sept. 24, 2013) (Paper 15).

Decision Denying Motion for Joinder for IPR2014-00508 at p. 3.

The issue joinder interpretation provided a petitioner a mechanism to attempt to “cure” a partial institution based on new grounds of unpatentability or to challenge claims newly added to the litigation since the filing of the original IPR petition.  And this could be done even if the later-filed IPR petition was filed after the § 315(b) one-year bar date.

This week, the Board rejected four IPR petitions with joinder requests based on the earlier ‘issued joinder” interpretation of  § 315(c).  In Microsoft Corp. v. Enfish LLC (IPRs 2014-00574, -00575, -00576, and -00577), the Board denied joinder, but only after it made a full analysis of Microsoft’s joinder request based on the issues raised by Microsoft.  Since Microsoft was the Petitioner in the underlying instituted proceedings, these later-filed IPR petitions and their respective joinder requests were made by the same party (Microsoft), yet the Board did not apply the “party joinder” interpretation announced in Target.  Had the Board used the party joinder interpretation the decisions would have been much shorter.

Microsoft had filed these four IPRs and their respective joinder requests after the one-year IPR bar, so failure to obtain joinder resulted in each later-filed petition being denied based on the § 315(b) one-year bar.

The Target and Microsoft decisions were only four days apart.  It may take more time to determine whether the Board intends to use the issue joinder or party joinder approach to decide future IPR joinder motions.

 

Litigation Defendants Cannot Rely on Joinder to Avoid Timing Requirements of Inter Partes Reviews

Tuesday, December 24th, 2013

In my last post, we explored the interplay of the one-year bar under 35 U.S.C. § 315(b) and joinder in inter partes review (IPR) proceedings.  That case involved a Petitioner who could not have filed an IPR petition prior to the 315(b) bar date because the bar triggered prior to the date that the America Invents Act (AIA) authorized filing of IPR petitions.  That Petitioner was barred from joining another set of IPRs when those IPRs were terminated early (before decision on institution).

Consider the situation where a prospective petitioner could file an IPR under the AIA, but observes another Petitioner has already filed an IPR petition, so the prospective petitioner hesitates to file pending the results of the earlier-filed IPR petition.  Shouldn’t that  prospective petitioner just wait to see if the first petition is successful in obtaining institution of trial, and then join if the first petitioner is granted?  If so, the prospective petitioner could file its petition with a request for joinder to join the first IPR under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), correct?  Perhaps, but what happens if the first Petitioner settles with Patent Owner before the Board’s institution decision?  If the prospective petitioner files its petition after it is barred under 315(b), and the first IPR terminates before institution of trial, the prospective petitioner will have lost its right to join the earlier-filed IPR and its late petition will be dismissed.  That’s precisely what recently happened in IPR2014-00244:

The Board agrees with Patent Owner that Fifth Third Bank should not have delayed in filing its petition until after it learned of the settlement, allowing the one-year period under 35 U.S.C. § 315(b) to lapse. By doing so, Fifth Third Bank took a risk that the inter partes review proceeding would terminate prior to a decision on institution, as 35 U.S.C. § 315(c) only permits joinder to a previously instituted case. See 35 U.S.C. § 315(c) (“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review . . .”). We do not find persuasive Fifth Third Bank’s arguments of prejudice. Fifth Third Bank made a litigation choice, and now must face the consequences.

Because Fifth Third Bank delayed its filing, and IPR2013-00341 has been terminated, the joinder statute’s prerequisite of an instituted review cannot be met. Fifth Third Bank’s request for joinder is, therefore, denied.

Fifth Third Bank v. Leon Stambler, IPR2014-00244, Paper 4 (December 17, 2013) at p. 5.

Under the statute, joinder is available if institution occurs.  But since settlement and termination can occur before institution of trial, a prospective petitioner must be careful not to allow the 315(b) bar to block its filing if that can be avoided.

Patent Office Board Takes a Bite out of Apple’s IPR Challenge of VirnetX Patents

Thursday, December 19th, 2013

In  mid-2013 Apple filed seven inter partes review petitions to challenge four VirnetX patents.  Recently, the Patent Trial and Appeal Board (the Board) denied all seven inter partes review (IPR) petitions.  This outcome demonstrates the Board’s current interpretation of the one-year bar applied in IPR proceedings and its position on joinder of petitions.

Apple’s Interpretation of the One Year Bar

Apple disclosed that its petitions were filed more than a year after service of a complaint asserting infringement of the subject patents, and understood that the petitions might be challenged depending on the Board’s interpretation of 35 U.S.C. § 315(b) (the statute barring IPR petitions filed after certain assertions of infringement):

Petitioner notes it was previously served with a complaint asserting infringement of the ’135 patent in August of 2010, which led to Civil Action No: 6:10-cv-417. During that action, the District Court established an additional civil action, Civil Action No. 6:13-cv-00211-LED, on February 26, 2013 (also pending in the Eastern District of Texas). The August 2010 complaint does not foreclose the present petition, as Patent Owner served a new complaint on Petitioner asserting infringement of the ’135 patent in December of 2012.

Apple Inc. v. VirnetX, Inc., et al., IPR2013-00348, Paper 1 (June 12, 2013), at p. 1 (emphasis in original).  Similar disclosures can be found in the other six related petitions:  IPR2013-00349, -354, 393, -394, -397, and -398.

Apple anticipated that the 2010 complaint service might cause a concern and argued that the 315(b) bar should not apply:

Petitioner submits this conclusion [that the petitions are not barred] is compelled by the plain language of § 315(b). Notably, § 315(b) does not specify a one-year deadline that runs from the date of the first complaint served on a petitioner. Rather, it states “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Thus, a petition filed within 1 year of the date any complaint alleging infringement of the patent is served on a petitioner is timely under the plain statutory language of § 315(b). This is also the only reading of § 315(b) consistent with the statutory design. Congress designed the IPR authority to be option to contest validity of a patent concurrently with district court proceedings involving the same patent. A timely filed IPR proceeding in any action a patent owner elects to commence is perfectly consistent with this statutory design.

Reading § 315(b) in this manner also is the only way to effectively foreclose gaming of the system by a Patent Owner. Indeed, if § 315(b) were read to foreclose IPR proceedings in a second, independent action for infringement a patent owner elected to commence, it would unfairly foreclose use of the IPR system. For example, a patent owner could assert irrelevant claims in a first action, wait a year, and then assert different claims in a new action that do present risks to a third party. In this scenario, the patent owner would foreclose legitimate use of an IPR to contest validity of the patent claims asserted in the second action based on the third party’s reasonable business decision to not dispute validity of irrelevant claims in the first action. Rather than attempting to decipher which scenarios would be improper, the Board should follow the plain meaning of § 315(b), and find a petition timely if it is filed within 1 year of the date any complaint alleging infringement of the patent is served on a Petitioner.

Finally, reading §315(b) to foreclose this petition based on the August 2010 complaint would be particularly unjust in this case. The 1-year period following service of the August 2010 complaint expired before it was possible to submit an IPR petition – petitions could only be filed on or after September 16, 2012.

Id., Paper 1 at pp. 2-3 (emphasis in original).

But Apple had one more card to play that could avoid the entire issue of the 315(b) bar:  a request for joinder with another IPR proceeding challenging the same patent.

Apple’s Joinder Request

Apple knew that if it could successfully join another IPR proceeding, such joinder under 35 U.S.C. § 315(c) (and  37 C.F.R. § 42.122(b)) would not be subject to the one year bar under the last sentence of 35 U.S.C. § 315(b).  Apple filed its Motion for Joinder on August 21, 2013, requesting joinder to IPR proceedings by New Bay Capital, LLC challenging the VirnetX patents:

Pursuant to the authorization granted by the Panel on August 14, 2013 in Paper No. 6, Petitioner Apple Inc. (“Petitioner” or Apple) moves to have the Board join IPR proceedings IPR2013-00348 & -00349 to each other and with IPR proceeding IPR2013-00375 filed by New Bay Capital, LLC (“NBC”), each of which concerns U.S. Patent No. 6,502,135.

Id., Paper 7 at p. 1.

Apple submits that joinder of the proceedings is fully warranted. See IPR2013-00004, Paper 15 at 4; Dell v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 2-3. Joinder is proper under the statutory design of inter partes review, will simplify and reduce the number of issues before the Board and will enable streamlined proceedings (i.e., one coordinated proceeding instead of three separate proceedings). In addition, the Board can manage the joined proceeding in a way that does not impact scheduling or conduct of the proceedings. See Motorola Mobility LLC v. Softview, LLC, IPR2013-00256, Paper 10 at 2-3.

Id., Paper 7 at p. 3.

So, it seemed like Apple had two independent avenues for potential institution of IPR:  (1) an interpretation of 315(b) that would result in no bar of the petitions, and (2) joinder with ongoing IPR proceedings filed by New Bay Capital, regardless of any potential 315(b) bar.

New Bay Capital Terminates its IPRs

On November 6, 2013, New Bay Capital filed unopposed motions to terminate its IPRs (IPR2013-00375, -376, -377, and -378):

Pursuant to 37 C.F.R. §42.73(b)(4) and the Board’s Order of November 1, 2013, Petitioner New Bay Capital, LLC (“New Bay”) moves to terminate the present inter partes review proceeding. Termination is appropriate because New Bay is abandoning this contest, VirnetX does not oppose and a trial has not been instituted.

The Board granted New Bay Capital’s motions and terminated those IPR proceedings on November 12, 2013.

Apple’s IPR Petitions Denied

The Board reviewed the facts of the complaints served on Apple in the past and decided that the 2010 complaint served on Apple barred its IPR petition under 315(b).  The Board also dismissed Apple’s joinder request because the Board had recently terminated the New Bay Capital IPRs:

The timeliness limitation of 35 U.S.C. § 315(b) does not apply to a request for joinder. As such, Petitioner filed a motion to join the instant proceeding with another proceeding, IPR2013-00375, pursuant to 35 U.S.C. 315(c). See Paper 7 (“Petitioner’s Motion for Joinder of Proceedings”). Granting the motion would obviate the time bar under 35 U.S.C. § 315 (b). The IPR2013-00375 proceeding, however, has been terminated. New Bay Capital, LLC v. Virnetx, Inc., IPR2013-00375, Paper 16 (PTAB Nov. 12, 2013). Accordingly, Petitioner’s motion for joinder is dismissed.

Id., Paper 14 at p. 5.

So both of Apple’s avenues for institution of trial in these seven IPR petitions were blocked by the Board.

Reconsideration Still an Option

Even though Apple’s seven IPR petitions were denied, Apple still has the right to request reconsideration and it remains to be seen if it will file requests for rehearing.  Such requests have historically proved to be unlikely to be granted.  Other Petitioners have sought additional avenues for institution that will be discussed in a future post.

Joinder in Patent Office Proceedings Clarified by PTAB

Monday, June 10th, 2013

Several posts ago we explored how the Board perceived joinder of a subsequent petition filed by a petitioner to an ongoing proceeding.  A recent ruling by the Patent Trial and Appeal Board (PTAB) clarifies how the Board views joinder of new parties to pending post-grant proceedings.  U.S. Bancorp filed a covered business method petition on March 29, 2013 to challenge the validity of U.S. Patent 6,625,582, owned by Retirement Capital Access Management Company LLC (Retirement Capital).  After filing that petition, and before a preliminary patent owner response was filed by Retirement Capital, U.S. Bancorp requested permission to file a motion for joinder of additional parties to that proceeding (CBM2013-00014).  According to U.S. Bancorp, after its petition was filed, two additional parties in related lawsuits pending in Delaware wished to join the case as petitioners and real parties-in-interest.

The Board identified this request as a case of first impression, because in no other prior proceeding had a party to the proceeding requested joinder of other new parties post-petition.  The PTAB distinguished one other example provided by U.S. Bancorp, because in that proceeding (CBM2013-00005) the parties were all petitioners at the time of filing the petition.

The PTAB denied authorization for U.S. Bancorp to file its motion to join these parties, stating:

The statutory framework provided by Congress thus contemplates the situation where a party might wish to join an additional petition with an already instituted proceeding, and provides a way for that party to do so. The statute requires the filing of “more than 1” petition for joinder to take place. Furthermore, the statute requires that the additional petition “warrants the institution of a . . . review.” The corresponding USPTO regulation similarly specifies that “[j]oinder may be requested by a patent owner or petitioner.” 37 C.F.R. § 42.222(b) (emphasis added). Thus the statute and corresponding regulation are directed to joining of proceedings not parties.

(CBM2013-00014, Order of June 5, 2013 at p. 3.)

One takeaway from this decision is that to join parties to an existing proceeding it may be necessary to file additional petition(s) with a request for joinder.  The request for joinder may be made as a motion under 37 C.F.R. § 42.22 pursuant to 37 C.F.R. § 42.122(b) for inter partes review or pursuant to 37 C.F.R. § 42.222(b) for post-grant reviews and covered business method reviews.

PTAB IPR Petition Joinder Practice Gains Momentum

Monday, April 22nd, 2013

Suppose a patent owner files suit and the defendant wants to file an AIA post-grant proceeding to challenge the validity of the patent.  Suppose further that the post-grant challenge is an inter partes review (IPR) filed by the defendant within a year of service of process of the complaint.  If the IPR petition only alleges grounds of invalidity for certain claims, and the patent owner later amends its complaint to add more claims to the action after the one year period of 35 U.S.C. § 315(b) that were not the subject of the original IPR petition, is the petitioner forced to use ex parte reexamination to challenge the newly added claims?  No.  If the petitioner can apply for joinder under 37 C.F.R. § 42.122(b), the PTAB may consider the second petition and join it with the first timely filed petition, even if it is beyond the one year period of 35 U.S.C. § 315(b).  In Microsoft v. Proxyconn, IPR2013- 00109, the Board allowed joinder, stating:

As is apparent from the statute, a request for joinder affects certain deadlines under the AIA. Normally, a petition for inter partes review filed more than one year after the petitioner (or the petitioner’s real party-in interest or privy) is served with a complaint alleging infringement of the patent is barred. 35 U.S.C. § 315(b), as amended; 37 C.F.R. § 42.101(b). However, the one-year time bar does not apply to a request for joinder. 35 U.S.C. § 315(b)(final sentence); 37 C.F.R. § 42.122(b). This is an important consideration here, because Microsoft was served with a complaint asserting infringement of the ʼ717 patent more than a year before filing the second Petition. Pet. 1. Thus, absent joinder of this proceeding with IPR2012-00026, the second Petition would be barred. Moreover, in the case of joinder, the one-year time requirement for issuing a final determination in an inter partes review may be adjusted. 35 U.S.C. § 316(a)(11), as amended.

This is good news for that Petitioner, since it allowed for adjustment of the petition grounds via joinder to match claims added to a parallel litigation after the one year period of 35 U.S.C. § 315(b).

A motion for joinder was very recently filed in IPR2013-00250 (Ariosa Diagnostics v. Isis Innovation), seeking to join the IPR2013-00250 proceeding with the trial already instituted in IPR2012-00022.  The motion for joinder cites the rule excerpt:

§ 42.122 Multiple proceedings and Joinder.

(b) Request for Joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested. The time period set forth in § 42.101(b) shall not apply when the petition is accompanied by a request for joinder.

It will be interesting to see how the Board considers joinder under the various fact patterns that are inevitable in practice.