By Matthew L. Cutler, Principal
To date, three distinct scenarios relating to joinder have been presented to the Board, each demonstrating inter partes review strategies being employed by Petitioners, as well as the Board’s willingness to join proceedings to ensure the just, inexpensive, and speedy resolution of IPR.
Before digging into those scenarios, however, we first note the statutory and regulatory underpinnings of joinder. While the first sentence of § 315(b) sets forth the well-known 1 year bar date by which a Petitioner must bring a petition seeking inter partes review after being served with a patent infringement complaint, the second sentence of this section makes clear that the 1 year deadline does not apply when joinder is sought. 37 CFR § 42.122(b) further defines this point, requiring that any request for joinder must be brought “no later than one month after the institution date of any inter partes review for which joinder is requested.”
35 USC § 315(b) – Patent Owner’s Action. — An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
37 CFR § 42.122(b) – Request for Joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested. The time period set forth in § 42.101(b) shall not apply when the petition is accompanied by a request for joinder.
The first scenario presented to the Board relating to joinder involves the case of a petitioner who brings a second petition against the same patent, asserting new grounds of challenge against claims set forth in the first petition, as well as additional claims from the patent. Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109 (Paper 15). In this situation, the Board relied on the authority granted in § 315(b) and § 42.122(b) to join the proceedings, even though the second petition was brought outside the one year critical date. Factors cited by the Board include that the same patents and parties were involved; there was an overlap in the prior art; there was no discernible prejudice to either party; and petitioner was diligent in filing the motion.
The second type of situation in which joinder has been requested in IPR proceedings is a second petition filed by a third party after the 1 year critical date of § 315(b), but within 30 days of a decision to institute, along with a motion to join under § 315(c). This situation arose in the cases of Kyocera Corp. v. Softview, LLC IPR2013-00004 (Paper 15) and Dell, Inc. v. Network-1 Security Solutions, Inc. IPR2013-00385 (Paper 17). In both proceedings, the Board granted the motion to join, but instituted procedural safeguards to ensure the proceeding did not become too cumbersome. To that end, the Board required consolidated filings wherein the second petitioner would only be allowed 7 pages of additional briefing if it disagreed with first petitioner. Relatedly, Patent Owner was granted 7 pages to respond to any such additional briefing. Also, the first petitioner was permitted to ask questions at deposition before second petitioner, and first petitioner was permitted to present argument at oral hearing before second petitioner. The parties were instructed by the Board to work together to allocate the time normally allotted to a petitioner.
The last scenario that has been presented to the Board is one step further from Scenario 2. In Sony Corp. of Am. v. Network-1 Security Solutions, Inc. IPR2013-00495, Paper 13, the Board considered a request for joinder brought by Sony and Hewlett-Packard against the same patent referenced above in the Dell proceeding. In this case, Sony and HP brought their petition within 30 days of the second Dell petition being joined to the original proceeding, but outside the 1 year critical date and outside the 30 day window, of § 42.122, after the original decision to institute. While the Board concluded that Sony and HP fell outside the scope of § 42.122, they still granted the motion to join, using its broad power to administer IPR proceedings under § 42.5. This decision is understandable given the unique arrangement under which Sony and HP were willing to operate. More specifically, the grounds asserted were identical to the earlier petitions (indeed, they were identical), and Sony and HP were willing to take virtually no role in the proceeding – no briefing, no questioning at depositions, no role at oral hearing – unless one of the earlier petitioners settled the case.
In general, the joinder provisions, and the cases that have flowed from them, demonstrate the Board’s goal of providing for just, speedy, and inexpensive proceedings. The Board has bent over backwards to allow joinder – especially in cases in which the later-filed petition is identical to the first-filed petition. Relatedly, it is clear to see the strategies of defendants in multi-defendant litigation. Where a first defendant files a petition within the one year critical period from service of a district court complaint, second and subsequent defendants can sit back and see if the petition is ultimately granted. If it is, they can easily join the proceeding, via the joinder provisions, and ensure they have a seat at the table in case Patent Owner decides to settle with the first petitioner (an occurrence that could otherwise shut other defendants out of the IPR process).