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Patent Counsel

Joinder Decisions

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Joinder Decisions

An inter partes review challenging the validity of a patent is normally barred after one year from service of a complaint. However, 35 USC § 315(b) indicates that the time limit doesn’t apply to a motion to join, which has been interpreted to allow filing an IPR after one year with a motion to join the other IPR. The window for doing this is within one month of institution of the IPR to be joined (37 CFR § 42.122(b)). This situation often occurs in multicase, multidefendant litigation.

  • Board consolidated petitions when cases involve the same filing date, patent, parties, and prior art.

    If it is amenable to granting inter partes review, the Board will likely grant joinder of petitions that were filed by the same parties, on the same date, and involve some overlap in prior art and additional evidence, if any. See, e.g., Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc., IPR2013-00469, Paper 21 at 14; Valeo, Inc., et al. v. Magna Electronics, Inc., IPR2014-00227 and IPR2014-00228, Paper 14 at 3.

    In Cardiocom, the Board determined that joinder was appropriate, reasoning that the “proceedings were filed on the same day and involve[d] the same patent, parties, and prior art” and finding “no discernible prejudice to either party, as the Scheduling Order entered for the joined proceedings contemplate[d] a final decision within one year of institution.” IPR2013-00469, Paper 21 at 14.

    In Valeo, the Board succinctly recited that it was appropriate to consolidate because the subject petitions “involve[d] the same patent and parties, and there [wa]s overlap in the asserted prior art and additional evidence submitted by Petitioner.” IPR2014-00227 and IPR2014-00228, Paper 14 at 3.

  • Board consolidated petitions when cases involve different parties but the same patent, subject matter and prior art.

    In granting joinder, the Board in Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc., IPR2013-00557, noted that the two petitions — the petition to-be-consolidated and the petition that was the target of consolidation — involved the same patent (U.S. Patent No. 8,135,398), common subject matter (HDMI technology) and a common prior art reference (the “Seaman” reference), granting joinder over the Patent Owner’s opposition. Paper 10 at 17-18. The Board concluded that “the minimal additional amount of work required on the part of Patent Owner to address claims 58 and 63 of the ‘398 Patent is strongly outweighed by the public interest in having consistency of outcome concerning similar sets of claimed subject matter and prior art.” Id. at 18.
  • Board consolidated petitions, finding circumstances would not unduly complicate or delay to-be-joined petition.

    SAP America Inc. (SAP) filed a petition for inter partes review of U.S. Patent No. 6,738,799 (the ‘799 Patent) on January 22, 2013 (the SAP IPR Petition), SAP America Inc. v. Clouding IP, LLC, IPR2014-00306, Paper 1, and moved to join Unified Patents, Inc. v. Clouding IP, LLC, Case IPR2013-00586 (the Unified IPR), CITE. Granting SAP’s motion, the Board found that the SAP IPR Petition raised “no new issues” vis-a-vis the petition in the Unified IPR, SAP’s proposed “procedural protections” would allow the petitioner in the Unified IPR — Unified Patents, Inc. (“Unified”) — to retain control over the joined proceeding, and “no apparent need to alter” the scheduling order in the Unified IPR. SAP America Inc. v. Clouding IP, LLC, IPR2014-00306, Paper 13 at 4. There were no new issues because the grounds of unpatentability in SAP’s IPR Petition were “identical” to those in the petition for the Unified IPR. Id. at 3. As to the procedural protections, SAP proposed consolidated filings for which Unified had responsibility with seven additional pages allocated to SAP. Id. at 4. And, SAP withdrew the declaration of its expert in support of its petition and instead relied on the declaration submitted in support of the Unified IPR. Id.
  • Board declines request to stay or consolidate parallel reexamination; Joinder is not only for consolidating one IPR with another IPR.

    In GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00043, Paper 5 at 1, Petitioner GEA Process Engineering, Inc. (GEA) requested that the Board stay the co-pending ex parte reexamination of U.S. Patent No. 6,475,435 patent (Reexamination Control No. 90/012,135) or consolidate the inter partes review proceeding with the reexamination. The Board denied the requests to stay or consolidate. GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00043, Paper 16 at 4. The Board cited two factors that persuaded it to deny the stay request — whether the challenged claims are subject to amendment in the reexamination and the extent of overlapping issues in the two proceedings. Id.

    Although the Examiner in the reexamination proceeding had issued a non-final action, the Patent Owner Steuben Foods, Inc. (Steuben Foods) stipulated to foregoing amendment in the reexamination. Id.

    Additionally, despite “complete overlap between the claims challenged” in the inter partes review and the reexamination, the Board found there was limited overlap in the asserted prior art. Id.

    With respect to the consolidation request, the Board held that, instead of securing a “just, speedy and inexpensive resolution,” consolidation had the potential of delaying resolution because reexamination involved 42 claims in addition to the 37 original patent claims. Id.

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