In its Decision, the Board granted Petitioner’s Motion for Joinder with IPR2014-00003. The Board granted this Motion despite Patent Owner’s Opposition to the Motion, and with the knowledge that the Petitioner in IPR2014-00003 was an entity separate from the Petitioner in the instant proceeding. If not for the Board granting Petitioner’s Motion for Joinder, the instant proceeding would have been time-barred under 35 U.S.C. § 315(b).
The Petitioner in IPR2014-00003 (“the ’003 Petitioner”) filed its Petition to Institute on October 1, 2013, in order to challenge the patentability of claims 1-94 of the ’351 patent. The parties and Board in that case then agreed to limit the ’003 Petition to claims 1-6, 9, 12, 13, 19-29, 32, 35, 36 and 42-46 of the ’351 patent, after which the Board instituted inter partes review of all of these claims based on an anticipation ground (all challenged claims except for claims 2, 3, 25, and 26) and on an obviousness ground (all challenged claims).
In the instant ’556 Proceeding, the Board instituted inter partes review of each of claims 2, 3, 25, and 26 based on an anticipation ground. All other grounds on which the Board instituted trial in the instant ’556 Proceeding “are identical to those in which [it] instituted trial in IPR2014-0003.”
The Request for Joinder in the instant ’556 Proceeding was filed within one month of institution of the ’003 Proceeding, as required by 37 C.F.R. § 42.122(b). As noted by the Board, 35 U.S.C. § 315(b) states that while an inter partes review may not be instituted based on a petition filed more than one year after the petitioner is served with a patent infringement complaint, this time limitation does not apply to a request for joinder under 35 U.S.C. § 315(c).
The Board then set forth that a motion for joinder must necessarily: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact, if any, joinder will have on the trial schedule for the existing review; and (4) specifically address how briefing and discovery may be simplified. Petitioner in the instant proceeding asserted that its Motion for Joinder met all of these criteria.
Patent Owner, in contrast, opposed joinder because it believed that “the Petition asserts an anticipation ground concerning claims 2, 3, 25, and 26 that would effectively allow [the ‘556 Petitioner] to broaden the scope of IPR2014-00003, despite its filing the Petition in the current case after the one-year limit under 35 U.S.C. § 315(b).” In response to this assertion, the Board was “not persuaded that the possibility of broadening the scope of issues in IPR2014-00003 is an adequate reason for denying joinder;” did not find any language in either 35 U.S.C. § 311 or § 315(c) requiring it to limit the Petition in the instant ’556 Proceeding to identical issues in the ’003 Proceeding; and thus, was “persuaded that the impact of joinder on the previous proceeding will be minimal from both a procedural and substantive view point.”
Patent Owner also asserted that joinder would result in inefficient use of the Board’s time and resources, and would be inconsistent with the Board’s previous action in the ’003 Proceeding. Nonetheless, the Board concluded that “the impact of joinder on the existing proceeding would be minimal.”
Enzymotec Ltd. and Enzymotec USA, Inc. v. Neptune Technologies & Bioresources, Inc., IPR2014-00556
Paper 19: Decision
Dated: July 9, 2014
Patent 8,278,351
Before: Lora M. Green, Jacqueline Wright Bonilla, and Sheridan K. Snedden
Written by: Snedden