Denying Joinder Because No Reason Petitioner Could Not Have Presented All Grounds In Single Petition IPR2015-00482


Takeaway: Even if the timing of proceedings and their speedy resolution would be unaffected by a joinder, the Board may deny joinder where petitioner fails to explain why it could not have combined its petitions into a single petition.

In its Decision, the Board denied Petitioner’s Motion for Joinder to join the instant proceeding with another proceeding filed by Petitioner, IPR2015-00491. In the instant proceeding, Petitioner had sought inter partes review (IPR) of claims 1-32 of the ’040 patent. On the same day as the instant proceeding’s petition was filed, Petitioner filed a second Petition seeking IPR of claims 1-13, 15-28, and 30-32 of the ’040 patent (IPR2015-00491) based on different grounds than the instant proceeding. The Board granted Institution in both proceedings. Petitioner subsequently filed a Motion for Joinder.

The Board noted that joinder is at its discretion and that patent trial regulations must be construed to secure “just, speedy, and inexpensive resolution of every proceeding” under 37 C.F.R. § 42.1(b).

Petitioner argued that joinder is appropriate because it involves the same parties, same secondary references, same panels, and nearly identical schedules. Petitioner argued that Patent Owner is not prejudiced by joinder, and there will be no delay due to the joinder because oral arguments are scheduled for the same day.

Patent Owner asserted that (1) Petitioner does not state a reason for joinder, (2) joinder would prejudice Patent Owner, and (3) joinder would not be conducive to fairness. Patent Owner asserts that the primary references and some secondary references are different, such that each Petition asserts a different ground of unpatentability. Patent Owner argued it would be unfair for it to be limited to a single response to the alleged grounds. Patent Owner argued that Petitioner could have presented all of its grounds for unpatentability in a single petition as well.

The Board concluded that joinder would not have an impact on the timing of the proceedings or their speedy resolutions. However, the Board stated that it believed Petitioner seeks to “cut in half the number of pages” Patent Owner is allowed to respond to the challenges. Thus, Petitioner has not successfully argued that joinder would reduce expenses. The Board agreed with Patent Owner that Petitioner has not explained why it could not have presented all of its grounds in a single petition. The Board concluded that in the interests of ensuring a just proceeding, Patent Owner should be allowed to respond to the two petitions separately.

Paper 21: Decision on Motion for Joinder
Dated: September 22, 2015
Patent 8,694,040
Before: James P. Calve, Richard E. Rice, and David C. McKone
Written by: Calve