In its Decision, the Board denied Petitioner’s Motion for Joinder and denied institution of inter partes review of the challenged claims, claims 6, 15, and 16, of the ’566 Patent. This Petition involves the same parties and same patents at issue as SkyHawke Technologies, LLC v. L&H Concepts, LLC, IPR2014-00438 (“the ’438 proceeding”), with which Petitioner sought joinder. Continue reading
Category Archives: Motion for Joinder
Granting in part Institution and Denying Joinder CBM2015-00015
In its Decision, the Board instituted a covered business method (“CBM”) patent review of claim 1 of U.S. Patent No. 8,118,221 B2 and declined to institute a CBM patent review of claims 2, 11, and 32. The ’221 patent relates to “a portable data carrier for storing and paying for data and to computer systems for providing access to data to be stored” and the “corresponding methods and computer programs.” It describes providing portable data storage together with a means for conditioning access to that data upon validated payment. Continue reading
Denying Motion for Joinder CBM2015-00009
In its Decision, the Board denied Petitioner’s Motion for Joinder seeking to join the already-instituted CBM2014-00100 in light of the Board’s decision to institute trial in the instant Petition. Continue reading
Granting Request for Adverse Judgment IPR2014-01053
In its Order, the Board granted Patent Owner’s Request for Adverse Judgment in regard to claims 1-5 and 8 of the ’501 patent. The Board thus concluded that claims 1-5 and 8 of the ’501 patent are not patentable, and indicated that a certificate canceling these claims would issue in due course. Continue reading
Denial of Motion for Joinder IPR2015-00549
In its Decision, the Board denied joinder of the instant proceeding with IPR2014-00901 and denied institution of the Petition. In particular, the Board held that Petitioner was estopped from requesting inter partes review under 35 U.S.C. § 315(e)(1) based upon a final written decision in IPR2013-00635. Continue reading
Granting Motion for Joinder IPR2015-00568
In its Decision, the Board granted Petitioner’s Motion for Joinder and granted institution of inter parties review as to the challenged claim 7 of the ’811 Patent. Petitioner filed its Petition along with a Motion for Joinder requesting to join 505 Games Interactive, Inc. v. Babbage Holdings, LLC, IPR2014-00954 (“the ’954 proceeding”). The Board had instituted the same grounds of unpatentability over the same claim raised in Petitioner’s Petition. Continue reading
Granting Joinder IPR2014-00508, 509
In its Decisions in IPR2014-00508 (the ’508 IPR) and IPR2014-00509 (the ’509 IPR), the Board granted Petitioner’s Motion for Joinder such that the ’508 IPR was instituted and joined with IPR2013-00531 and the ’509 IPR was instituted and joined with IPR2013-00533.
Petitioner had filed two Petitions for inter partes review, each Petition challenging one of the ’563 patent and the ’531 patent. After the Petitions were filed, Patent Owner produced a prior art reference (Asada) to Petitioner in the related district court litigation. As the Board noted, Petitioner’s Motions for Joinder were filed within one month after institution of the two previously-filed Petitions. The proceedings involved the same parties and the same challenged patents. With respect to the challenged claims and the asserted prior art, the ’508 IPR and the ’509 IPR challenged claims that depend from those challenged in the earlier-filed Petitions and only the Asada reference was being added.
Patent Owner first argued that joinder was not appropriate because new patentability analyses and substantive arguments beyond those of the previous proceedings were being presented. However, the Board noted that Petitioner “moved to limit the Petition to claims 1, 20, and 21” in the ’508 IPR (claims 1, 18, and 19 in the ’509 IPR) and that only two grounds were being instituted in each new IPR. Thus, the Board held that the grounds in the ’508 and ’509 IPRs “do not go substantially beyond those on which trial was instituted” in the prior respective proceeding.
Patent Owner also argued that joinder was inappropriate because “Petitioner did not propose a modified schedule, nor did it explain how the schedule could be reconciled with the schedule” in the prior proceedings. The Board acknowledged that “there is no way to reconcile the schedule in the instant proceeding with that in IPR2013-00531 [and IPR2013-00533] given that oral hearing has already been held in IPR2013-00531 [and IPR2013-00533].” However, the Board noted, the delays were outside of Petitioner’s control.
Patent Owner also argued that Petitioner had not established how joinder would promote efficiency and that several instituted claims were being re-challenged. However, the Board noted, as Patent Owner acknowledged, trial was being instituted on a limited number of claims and grounds.
The Board concluded that joinder was appropriate. As the Board explained: “The same patent and parties are involved in both proceedings. There is an overlap in the cited prior art. Petitioner has been diligent and timely in filing the Motion. And while some adjustments to the schedule will be necessary, many of those adjustments were due to the procedural history of this proceeding, and beyond Petitioner’s control.” Because oral hearing had already occurred, no scheduling order was issued. Instead, the Board ordered the parties to meet and confer regarding an expedited schedule in advance of a conference call to be held with the Board.
In the dissenting opinion, Judge Fitzpatrick, joined by Judges Bisk and Weatherly, argued that Section 315(c) “does not authorize joinder of proceedings.”
Target Corp. v. Destination Maternity Corp., IPR2014-00508, IPR2014-00509
Paper 31 (IPR2014-00508) Paper 30 (IPR2014-00509): Decision on Motion for Joinder
Dated: February 12, 2015
Patents: RE43,563 E (IPR2014-00508); RE43,531 E (IPR2014-00509)
Before: Michael P. Tierney, Lora M. Green, Joni Y. Chang, Thomas L. Giannetti, Jennifer S. Bisk, Michael J. Fitzpatrick, and Mitchell G. Weatherly
Written by: Green
Dissent by: Michael J. Fitzpatrick joined by Jennifer S. Bisk and Mitchell G. Weatherly
Related Proceeding: IPR2013-00531; IPR2013-00533
Granting Joinder and Instituting Inter Partes Review IPR2015-00074
In its Decision, the Board instituted an inter partes review and granted Petitioner’s Motion for Joinder.
The Board first considered whether to institute inter partes review. In response to a Board order, Petitioner filed a Notice Regarding Joinder Participation in which it “expressly agreed to limit its challenge to the same ground on which [the Board] instituted trial in the [Existing] IPR.” With respect to the ground on which trial was instituted in the Existing IPR, “Patent Owner’s Preliminary Response in this proceeding . . . did not raise substantially different arguments or present substantially different evidence” from what the Board had already considered in the course of instituting trial in the Existing IPR. Accordingly, the Board instituted an inter partes review in the proceeding on the same ground as it did in the Existing IPR. Continue reading
Granting Petitioner’s Request for Joinder IPR2014-01365 (or -0360)
In its Decision, the Board granted Petitioner’s Motion for Joinder with respect to the asserted ground that claims 44 and 47 of the ’216 patent would have been obvious, and instituted inter partes review based on this ground. On the other hand, the Board denied the Motion for Joinder in all other respects, and found that no other ground was authorized for inter partes review. Continue reading
Denying Joinder and Institution IPR2015-00118
In its Decision, the Board denied institution of inter partes review and denied Petitioner’s Motion for Joinder. Petitioner had filed a motion requesting joinder to IPR2014-00519, in which the Board instituted inter partes review from some claims, but denied review of other challenged claims. The ’580 patent relates to “a data communications system in which a plurality of modulation methods are used to facilitate communication among a plurality of modem types.” Continue reading