Decision Instituting CBM and Granting Motion for Joinder CBM2015-00087

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Takeaway: In asserting a ground based on obviousness, the petitioner must show where each and every limitation of a claim is disclosed in the prior art and provide support for its reason to combine the references. 

In its Decision, the Board instituted covered business method patent review of all of the challenged claims (claims 1-8) of the ’883 Patent and granted Petitioner’s Motion for Joinder. The ’883 Patent relates to an affiliate manipulation system that permits consumers, Internet Service Providers, search engines, and intermediaries to maximize affiliate program participation in transactions by or through them. Continue reading

Denying Last-Day Motion for Joinder IPR2015-00271

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Takeaway: Waiting until the last possible day to file a motion for joinder without providing compelling rationale justifying any delay, lack of prejudice, or other factors, counsels in favor of denying the motion for joinder and the accompanying petition.

In its Decision, the Board denied Petitioner’s motion for joinder and Petition for inter partes review of claims 1-23 of U.S. Pat. No. 5,513,129. Petitioner sought to join challenges against the ‘129 patent in a pending proceeding against the ‘129 patent, Ubisoft Ent. SA v. Princeton Digital Image Corp., Case IPR2014-00635 and filed its motion for joinder one month to the day after the Ubisoft IPR was instituted. Continue reading

Motion for Joinder Granted IPR2015-00611

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Takeaway: If the application that led to the challenged patent included a misstatement concerning the relationship between the application and an earlier application to which it attempted to claim priority, the Board may find that the claims in the challenged patent are not entitled to the earlier filing date, which may result in a finding that the claims are unpatentable over intervening prior art.

In its Decision, the Board instituted an inter partes review of claims 1-31 of U.S. Patent No. 7,643,168 and granted Petitioner’s Motion for Joinder.

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Joinder Denied When New Declaration Used In New Petition IPR2015-01184

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Takeaway: Despite challenging the same claims with the same art, the Board may deny joinder of two proceedings when different expert witnesses are proffered for each proceeding because new issues may be raised with respect to the new declaration for the new witness.

In its Decision, the Board denied institution of inter partes review (IPR) of claims 1, 8-13, 15, 16, 18-21, and 23-30 of the ’212 patent. The Board also denied Petitioner’s motion for joinder with Sony Mobile Communications (USA) Inc. (“Sony”) v. Adaptix, Inc., IPR2014-01525. Continue reading

Denying Institution IPR2015-00762

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Takeaway: Whether a petitioner will be successful on a motion for joinder when it is already a party to the proceeding to which it is requesting to join is dependent upon the panel because different panels have come to different conclusions.

In its Decision, the Board denied Petitioner’s Motion for Joinder, and did not institute inter partes review of any of the challenged claims (1-3, 8, 9, 12, 16, and 19) of the ’349 Patent. The ’349 Patent relates to heating, ventilating, and/or air conditioning (“HVAC”) systems. Continue reading

Denying Joinder Where Agreement to File Consolidated Papers Was Not Obtained IPR2015-00550

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Takeaway: Failure of a petitioner to obtain agreement to file consolidated papers with the petitioner in a proceeding to be joined will likely weigh against a motion for joinder.

In its Decision, the Board exercised its discretion under 35 U.S.C. § 315(c) to deny Petitioner’s Motion to Join the Petition to IPR2014-00876 and denied institution of the instant proceeding. Petitioner timely filed its Motion for Joinder within one month of the institution of trial in IPR2014-00876 (“the Apotex IPR”). Both Patent Owner in the instant proceeding and the petitioner in the Apotex IPR filed oppositions to the Motion for Joinder. The Board determined that the reasons for joinder “do not outweigh meaningful reasons not to allow joinder.”

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Denying Institution of Petition Based on Previously Submitted Art IPR2015-00555

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Takeaway: The Board may deny institution when Petitioner does not allege that the applied art was not known or available to it at the time of a prior related proceeding regarding the same patent.

In its Decision, the Board denied institution of inter partes review of claim 21 of the ’228 because Petitioner had failed to allege that the applied art was not known or available to Petitioner at the time of a prior related proceeding of the ’228 patent. The Board also denied Petitioner’s request for joinder of IPR2014-00892 (IPR ’892). Continue reading

Decision Denying Motion for Joinder IPR2015-00521

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Takeaway: If a petitioner seeks joinder with an earlier-filed proceeding that is one of several related proceedings, petitioner’s Motion for Joinder should address the impact of joinder on all of the related PTAB proceedings, not just the one it seeks to join. 

In its Decision, the Board denied Petitioner’s Motion for Joinder. Petitioner filed a Petitioner requesting an inter partes review of claims 1, 11, 16, 18, and 22-24 of U.S. Patent No. 7,801,304 along with a Motion for Joinder seeking to join the instant proceeding with Amazon.com, Inc. and Amazon Web Services, LLC v. Personalized Media Comm., LLC, IPR2014-01532.

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Granting Joinder and Instituting Review of Second Petition by Same Party IPR2015-00057

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Takeaway: The Board can exercise discretion in granting a motion for joinder and may modify a schedule for a proceeding in response to Patent Owner’s argument that joinder may not permit adequate time for discovery.

In its Decision, the Board granted institution of inter partes review of claims 10, 17, and 18 of the ’550 patent. The Board granted Petitioner’s Motion for Joinder to join the instant proceeding with another proceeding filed by Petitioner, IPR2014-00513 (“the ’513 proceeding”). Continue reading

Granting Motion for Joinder IPR2015-00057

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Takeaway: To support a conclusion of obviousness, all that is required is a showing of a reasonable expectation of success, not absolute predictability of success.

In its Decision, the Board found that Petitioner had established a reasonable likelihood of prevailing with respect to claim 10, but not with respect to claims 17 and 18. The Board also granted Petitioner’s Motion for Joinder with IPR2014-00513 (“the ’513 proceeding”). In addition to the ’513 proceeding, Petitioner challenged the ’550 patent in a Petition that was ultimately not instituted by the Board. IPR2014-00512 (“the ’512 Petition”). Continue reading