Addressing the requirements for joinder of a covered business method (CBM) review to an ongoing CBM review, the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB or Board) found that petitioner met its burden to show it was entitled to the requested relief. Skimlinks, Inc. and Skimbit, Ltd. v. Linkgine, Inc., Case No. CBM2015-00086 (PTAB, June 12, 2015) (Kalan, APJ).

The petitioner Skimlinks/Skimbit sought to institute a CBM patent review of a patent based on four grounds, all of which were already asserted in a previously-instituted CBM (VigLink, Inc. v. Linkgine, Inc., CBM2014-00184) against the same patent filed by a different petitioner. The Skimlinks petitioner also filed a Motion for Joinder with the VigLink CBM, requesting joinder of the first two grounds with the VigLink CBM and requesting continuation of the present proceeding with respect to a third ground. Neither VigLink nor the patent owner opposed joinder.

The PTAB agreed that joinder with the VigLink CBM would promote efficient resolution of both proceedings, citing the petitioner’s statement “that both proceedings involve the same prior art, the same claims and essentially the same arguments and evidence.” The PTAB found that “[p]rejudice to Patent Owner in this regard is minimal,” explaining that since the present proceeding was filed before institution of the VigLink CBM, the petitioner did not have the benefit of the PTAB’s analysis, and thus the petitioner’s petition was “an independent presentation of the same prior and related evidence addressing the same claims.” Further, with regard to differences between the petitioner’s evidence and arguments and the evidence and arguments provided by VigLink in the VigLink CBM, the PTAB reasoned that “resolving these differences in a single proceeding is the most efficient course of action.”

The PTAB granted the petitioner’s motion for joinder on the first two grounds, noting that the “scheduling of the joined proceeding” would “occur so as to minimize impact to the Patent Owner.” However, the PTAB denied, without explanation, the petitioner’s request to continue the present proceeding under the third ground, thereby terminating the present proceeding and directing all future filings to be made in the VigLink CBM.

Practice Note: A motion for joinder has the most likelihood of success if the impact to both the trial schedule for the existing CBM review and to the patent owner is minimal.