iTakeaway: Even if two proceedings have nearly identical petitions, joinder will not be granted “as a matter of right.”
In its Decision, the Board denied Patent Owner’s Motion for Joinder with IPR2014-00057. According to the Board, Patent Owner had not met its burden of demonstrating that joinder is warranted under the circumstances of this case. Patent Owner had argued that if there are two proceedings with nearly identical petitions, joinder should be granted “as a matter of right.” The Board disagreed, noting that joinder is not automatic under any circumstance, and that, instead, the Board had discretion regarding whether to join Patent Owner as a party to IPR2014-00057.
Patent Owner asserted that joinder with IPR2014-00057 was appropriate because its Motion for Joinder was timely; that no new issues were raised by the Petition in the instant proceeding because it is essentially identical to the Petition in IPR2014-00057; that granting joinder would be more efficient and lead to consistent results; and that neither party would be prejudiced. Petitioner responded by arguing that joinder would complicate and delay IPR2014-00057, and that because Patent Owner is an entity created by a group of companies including Google Inc. and NetApp Inc., the Petition filed in the instant proceeding failed to identify all the real parties-in-interest as required by 35 U.S.C. § 312(a)(2). Thus, Petitioner indicated that it would request additional discovery as to whether there are other parties that fund and control Patent Owner. Patent Owner disputed Petitioner’s real-parties-in-interest position, contending that Patent Owner is an independent company.
The Board concluded that there was at least one substantive issue in the instant proceeding that was not before it in IPR2014-00057, namely, the potential for additional discovery based on the fact that Patent Owner was founded by intellectual property professionals to deter non-practicing entity (NPE) litigation. According to the Board, “it is not unreasonable for [Petitioner] to seek authorization for additional discovery in order to determine what companies, if any, fund and control [Patent Owner]. This potential for additional discovery, according to the Board, presented a new substantive issue that weighed in favor of denying Patent Owner’s Motion for Joinder.
The Board went on to note that IPR2014-00057 is one of five related inter partes reviews in which a trial has been instituted, and that “[t]he discovery process and trial schedule for IPR2014-00057 has been coordinated and synchronized with each of the related inter partes reviews.” Nonetheless, the Board found that Patent Owner had not adequately explained what impact joinder would have on the synchronized trial schedules of these five related inter partes reviews. “As such,” according to the Board, “joining this proceeding with IPR2014-00057 most likely would affect our ability to complete all five proceedings in a timely manner and, as a result, weighs in favor of denying [Patent Owner’s] Motion for Joinder.” The Board then noted other factors weighing in favor of the denial of Patent Owner’s Motion for Joinder.
Unified Patents, Inc. v. Personal Web Technologies, LLC and Level 3 Communications, LLC, IPR2014-00702
Paper 12: Decision on Motion for Joinder
Dated: July 24, 2014
Patent 5,978,791
Before: Kevin F. Turner, Joni Y. Chang, and Michael R. Zecher
Written by: Zecher
Related Proceedings: IPR2014-00057
