Takeaway: Withdrawing a Motion for Joinder is not automatic.

In its Order, the Board denied Petitioner’s request for authorization to withdrawing its Motion for Joinder. Petitioner’s Motion for Joinder proposed joining the instant proceeding with IPR2013-00292, which involves the same patent, and extending the schedule of IPR2013-00292 by approximately five months. Petitioner then requested authorization to withdraw its Motion for Joinder, asserting that such authorization was warranted because (1) Patent Owner had taken different stances in the Preliminary Responses in the two proceedings, resulting in an unwarranted complication raising estoppel questions; and (2) joining the proceedings would delay the schedule for the trial in IPR2013-00292. Although Patent Owner had initially opposed Petitioner’s Motion for Joinder, Petitioner later argued that its basis for opposing at that time was that it did not feel that it was appropriate to enlarge the scope of IPR2013-00292.

The Board, in denying Petitioner’s request for authorization to withdraw its Motion for Joinder, found that Petitioner had not shown good cause for withdrawing the Motion after briefing was complete. The Board indicated that even though it did not authorize Petitioner to withdraw the Motion for Joinder, the Board had yet to decide whether to grant the Motion for Joinder.

Microsoft Corporation v. Surfcast, Inc. IPR2014-00271
Paper 20: Order Denying Petitioner’s Request for Authorization to Withdraw its Motion for Joinder
Dated: April 21, 2014
Patent 6,724,403
Before: Joni Y. Chang and Matthew R. Clements
Written by: Clements
Related Proceeding: IPR2013-00292