Denying Joinder With Terminated Proceeding and Denying Institution IPR2016-00414

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Takeaway: The one year bar to granting a petition for inter partes review does not apply to a motion for joinder, but the Board will not grant joinder to a terminated proceeding.

In its Decision, the Board denied a Motion for Joinder and Petition requesting inter partes review of the ‘216 patent.  Petitioner had requested to join a petition “instituted on the same grounds of unpatentability over the same claims at issue in this proceeding.” Continue reading

Denying Leave to File Motion for Joinder Based on Prejudice to Patent Owner IPR2016-00453

Takeaway: The Board may deny a request to file a motion for joinder where timing differential between petitions would make any logistical accommodations necessary to synchronize the proceedings prejudicial to patent owner and where the later-filed petition challenges additional claims.

In its Order, the Board denied Petitioner’s motion for leave to file a motion for joinder. The Board had previously conducted a conference call with counsel for Petitioner and Patent Owner, where “Petitioner requested authorization to file a Motion for Joinder to join this proceeding with IPR2015-01706, which is directed to the same patent and in which a trial was instituted on February 9, 2016, in order to obtain certain scheduling and logistical efficiencies.” Continue reading

Decision Granting Joinder and Instituting Inter Partes Review IPR2016-00089

Takeaway: Joinder may be appropriate where a later-filed petitioner agrees to proceed based only upon the arguments and evidence advanced by an earlier-filed petitioner and accept a back-seat role, without any right to separate or additional briefing or discovery, unless authorized by the Board or the earlier-filed petitioner drops out of the proceedings.

In its Decision, the Board granted Petitioner’s motion for joinder and instituted inter partes review of claims 1-30 of the ‘131 patent. Petitioner sought to join a pending proceeding against claims 1-30 of the ‘131 patent, Lupin Ltd. et al. v. Senju Pharm. Co., Case IPR2015-01097. Continue reading

Decision on Institution Granting Joinder IPR2016-00167

Takeaway: A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review.

In its Decision, the Board granted Petitioner’s Motion for Joinder and instituted inter partes review of claims 1, 2, 6-8, and 12-14 of the ‘151 patent. Petitioner sought to join a pending proceeding against the ’151 patent, Mangrove Partners Master Fund, Ltd. v. VirnetX Inc., Case IPR2015-01047. Continue reading

Granting Rehearing of Decision on Institution Allowing Issue Joinder IPR2015-00762

Takeaway: Majority opinion of enlarged panel determined that the Board has discretion to grant a motion for joinder of two petitions by the same party that includes the same ground of unpatentability, at least where the second petition is fixing a procedural error in the first petition.

In its Decision, the Board granted Petitioners’ Request for Rehearing of the Board’s decision not to institute inter partes review of the ‘349 patent. In granting the rehearing, the Board also reversed its previous decision on institution and instituted the challenge to claims 1-3, 8, 9, 12, 16, and 19 as anticipated by Hideji, and joined this proceeding with IPR2014-01121. Continue reading

Decision Granting Institution and Joinder IPR2015-01026

Takeaway: If a petition is timely filed and includes the same grounds of unpatentability as a previous petition, then it is likely the Board will grant a motion for joinder. 

In its Decision, the Board instituted inter partes review of all challenged claims (1-20) of the ’216 Patent, and granted Petitioner’s Motion for Joinder with IPR2014-01453 (“the ’1453 IPR”). Continue reading

Denying Joinder Because No Reason Petitioner Could Not Have Presented All Grounds In Single Petition IPR2015-00482

Takeaway: Even if the timing of proceedings and their speedy resolution would be unaffected by a joinder, the Board may deny joinder where petitioner fails to explain why it could not have combined its petitions into a single petition.

In its Decision, the Board denied Petitioner’s Motion for Joinder to join the instant proceeding with another proceeding filed by Petitioner, IPR2015-00491. In the instant proceeding, Petitioner had sought inter partes review (IPR) of claims 1-32 of the ’040 patent. On the same day as the instant proceeding’s petition was filed, Petitioner filed a second Petition seeking IPR of claims 1-13, 15-28, and 30-32 of the ’040 patent (IPR2015-00491) based on different grounds than the instant proceeding. The Board granted Institution in both proceedings. Petitioner subsequently filed a Motion for Joinder. Continue reading

Infringement Complaint Provides Notice of Infringement for All Patent Claims IPR2015-00530

Takeaway: When a complaint alleging infringement of a patent alleges infringement of “one or more claims” or “at least claim X” of the patent, the defendant is on notice concerning potential infringement of any claims of the patent, and later identification of specific claims via infringement contentions does not extend the time period in which a petition for IPR may be filed. In addition, if a new petition is filed and joinder is sought with an earlier petition, the petitioner should file its petition and motion promptly and also should explain why the claims were not addressed in the earlier petition. 

In its Decision, the Board denied Petitioner’s Motion for Joinder and denied its Petition to institute inter partes review of claims 1, 23, 24, 26, 31, 47, and 51 of U.S. Patent No. 6,404,953. The ’953 patent generally relates to “an apparatus for optical noise reduction in optical assemblies by controlling or limiting undesirable photon entrance, reflection, departure, or appearance in or from the assembly.”

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