Takeaway: No consolidation was granted where the petitions involved some non-overlapping grounds and arguments. However, the Board used its discretion to coordinate the date of the oral arguments to lessen the burden on the patent owner.

In its Decision, the Board denied Patent Owner’s motion for consolidation of the following covered business method patent reviews (CBM): 2014-00182; 2015-00006; 2015-00010; 2015-00002; 2015-00014; 2015-00021; and 2015-00030.

Specifically, Patent Owner requested that all seven CBMs be consolidated into one proceeding or, alternatively, that the CBMs be consolidated into two proceedings by subject patent. As yet a third alternative, Patent requested the Square and Epicore CBMs involving the ’281 patent be consolidated with an option to consolidate the CBM filed by Informatica, later. Patent Owner argued that the two patents are related; share near identical specifications; and were found to be not patentably-distinct. Patent Owner further argued that consolidation would not substantively impact the trial schedule; would simplify briefing and discovery; the petitions involve similar grounds; and Petitioners rely upon the same two declarants.

Petitioners filed an Opposition, arguing that joining these proceedings would unduly prejudice it, cause unnecessary delay, and create undue burden for Petitioner and the Board. Petitioners further argued in a conference call with Patent Owner and the Board that consolidation would be prejudicial because of estoppel. However, the Petitioners agreed to modify the trial schedules in the proceedings so that the oral argument for each would occur on two consecutive days.

The Board has discretion under 35 U.S.C. § 325 to determine whether to consolidate CBMs filed against the same patent into a single CBM. Based on this discretion, the Board declined to consolidate any of the CBMs according to any of the three alternatives proposed by Patent Owner. With regard to the first proposal, notwithstanding the similarities between the ’281 patent and the ’201 patent, they are not the same patent. With regard to the other proposals to consolidate the CBMs into two proceedings, the Board agreed that there is some overlap of grounds and prior art, but noted that there are additional non-overlapping grounds, differences in analyses in the Petitions, and different declarants.

Accordingly, the Board declined to consolidate any of the proceedings, but did exercise its discretion to coordinate the date of the oral arguments in these CBMs so that oral arguments, if requested, will occur on two consecutive days.

Epicor Software Corporation v. Protegrity Corporation, CBM2015-00006
Paper 26: Decision Denying Motion to Consolidate
Dated: June 8, 2015
Patent: 8,402,281 B1
Before: Kevin F. Turner, Meredith C. Petravick, and Gregg I. Anderson
Written by: Petravick
Related Proceedings: CBM2014-00182; CBM2015-00010; CBM2015-00002 (US 6,321,201 B1); CBM2015-00014 (US 6,321,201 B1); CBM2015-00021 (US 6,321,201 B1); CBM2015-00030 (US 6,321,201 B1)