October 28, 2014

IPR Joinder, While Common, is Not a Matter of Right

By Matthew L. Cutler, Principal

In IPR2014-00702, the Board denied Petitioner’s Motion for Joinder with a similar proceeding (IPR2014-00057), in a case styled as Unified Patents, Inc. v. PersonalWeb Technologies, LLC & Level 3 Communications, involving US Pat. No. 5,978,791. The -00057 proceeding challenged the same patent. While motions to join proceedings based on the same patent have been consistently granted, the Board denied the motion to join in this instance because the Petitioner failed to demonstrate that it met its burden to obtain the requested relief.

Joinder is governed by 35 U.S.C. § 315(c), which states:

“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.”

Thus, the Board has discretion to grant a request for joinder when it is warranted and, therefore, evaluates motions for joinder on a case-by-case basis. The Board noted that the key factor is this determination is to secure the just, speedy, and inexpensive resolution of every proceeding. In light of this discretionary power, the Board rejected an argument by Petitioner that joinder was a matter of right when two proceedings were nearly identical.

More specifically, the Board noted that the instant proceeding contains at least one new substantive issue that was not raised in the earlier -00057 proceeding. Here, the Board noted that Patent Challenger, Unified Patents, was an organization formed by Google, NetApp, and others.  Accordingly, Patent Owner argued, and the Board agreed, that additional discovery may be necessary in the instant proceeding to determine if there are additional real-parties-in-interest.

In addition, in view of the fact that the -00057 proceeding (which Petitioner sought to join) was one of five other IPRs, Petitioner had an obligation to explain what impact, if any, the joinder would have on the other proceedings. For example, all five of the other IPRs had synchronized schedules, etc. Petitioner’s failure to explain what impact joinder would have on those schedules undermined the request for joinder.

Given these issues, Petitioner was deemed not to have met its burden of demonstrating that joinder was warranted.