Granting Motion for Joinder IPR2014-00306

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Takeaway: In addition to simplifying issues without impacting the schedule of the existing proceeding, motions for joinder that include procedural protections that ensure one party will retain control as the petitioner are more likely to be granted.

In its Decision, the Board granted SAP’s Motion for Joinder to join the instant proceeding (“the SAP IPR”) with the proceeding filed by Unified Patents, Inc., IPR2013-00586 (“the Unified IPR”). SAP’s Motion was opposed by Patent Owner, but Unified filed no opposition.

The Board explained that SAP bears the burden to show that joinder is appropriate, and particularly should: “(1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified.”

First, Patent Owner argued that SAP had not identified “any compelling reasons” for joinder, which the Board dismissed because the reasons need not rise to the very high standard of being “compelling.” The Board then addressed SAP’s arguments and proposals in support of joinder.

SAP explained that the grounds of unpatentability in the SAP IPR and the Unified IPR are identical, and joinder would therefore not affect the Board’s ability to complete the review in a timely manner. SAP also argued that joinder would not result in any prejudice because the timing of the proceeding would not be affected, and that joinder would be more efficient for Patent Owner, who would be addressing the same issues in one proceeding instead of two.

SAP also proposed the following. It would withdraw the declaration of its expert and would instead rely upon the declaration submitted by Unified in the Unified IPR.  SAP also proposed that the Board order Unified and SAP to file consolidated filings.  Unified was to be ultimately responsible for the consolidated filings.  SAP requested, however, that it be provided additional pages in the consolidated filings, with corresponding additional responsive pages for Patent Owner.

The Board was persuaded that joinder was appropriate. Both Petitions raised the same issues, and SAP had proposed procedural protections to allow Unified to retain control over the joined proceeding.  Also, the Scheduling Order would not need to be altered such that the impact of joinder would be minimal.  In its Order, the Board further specified that SAP is authorized to file an additional paper, concurrent with the consolidated filings, not to exceed seven pages in which it could address points of disagreement with arguments in the consolidated filings.  Patent Owner was also authorized the same amount of pages to respond to SAP’s additional arguments.

SAP America Inc. v. Clouding IP, LLC, IPR2014-00306
Decision on Motion for Joinder
Dated: May 19, 2014
Patent 6,738,799
Before: Jameson Lee, Justin Busch, and Kristina M. Kalan
Written by: Busch
Related Proceeding IPR2013-00586