Takeaway: Joinder of two proceedings filed at substantially different times will not likely be granted where the joinder could render it difficult for the Board to complete the earlier filed proceeding within the statutory deadline.

In its Order, the Board denied the petitioners’ motion for joinder with the covered business method proceeding CBM2013-00014, primarily because the joinder would require a lengthy delay in the ongoing CBM2013-00014 proceeding.
The petition in the CBM2013-00014 proceeding was filed on February 1, 2013 and instituted on September 20, 2013. The Petitioners had sought to add one or more of the current Petitioners to the proceeding for CBM2013-00014, but the Board denied that request on June 5, 2013 because it did not have authority to join parties to an already-filed petition without the filing of an additional proceeding. The current proceeding (CBM2014-00012) was subsequently filed on October 15, 2014 challenging the same claims.

The Board explained that joinder of like proceedings is discretionary and that it is mindful that the rules “must be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” See 35 U.S.C. § 326(b); 37 C.F.R. § 42.1(b). The Petitioner has the burden of establishing entitlement to the relief and should “(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 would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified.” See e.g. Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013).

Ultimately, the Board held that joinder would adversely impact the Board’s ability to complete the existing proceeding in a timely manner. The CBM2013-00014 proceeding had an oral argument scheduled for April 1, 2014. In addition, although the same patent claims were being challenged, the new proceeding presents new arguments under 35 U.S.C. § 101 and provides additional claim construction arguments that weighed against granting the joinder request.

Regions Fin. Corp. v. Retirement Capital Access Mgmt Co. LLC, CBM2014-00012
Paper 17: Order on Petitioners’ Motion for Joinder
Dated: March 25, 2014
Patent 6,625,582
Before: Glenn J. Perry, Thomas L. Giannetti, and Trenton A. Ward
Written by: Ward