Takeaway: The statute clearly sets forth that the time bar under Section 315(b) does not apply with respect to a motion for joinder.

In its Decision, the Board instituted inter partes review of all challenged claims and granted Petitioner’s Motion for Joinder. The instant Petition asserted the same grounds as those instituted in IPR2015-01046 (“the ’046 proceeding”).

A motion for joinder must be filed within one month of the institution of a related proceeding and “should: (1) set for[th] the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review.”

The Board first noted that the instant Motion for Joinder was properly filed within one month of the institution of the ’046 proceeding. The Board then addressed the parties’ arguments.

Patent Owner first argued that because the Petition was not timely filed pursuant to 35 U.S.C. § 315(b) such that institution would be precluded, joinder under Section 315(c) should also be precluded. The Board explained, however, that Section 315(b) states that “[t]he time limit . . . shall not apply to a request for joinder,” and that this was confirmed by the Board’s rules. See 37 C.F.R. §§ 42.101(b), 42.122(b). The Board also acknowledged that Patent Owner had argued an “alternate interpretation of the statute,” but that the alternate interpretation was not persuasive.

Patent Owner also argued that the ’046 proceeding would be affected by a grant of joinder, and in particular, that the instant Petition raised “additional issues and evidence.” The Board noted that the “additional issue” allegedly raised in the instant Petition is whether the RFC 1034 reference “is a printed publication that was publicly available before the earliest effective filing date of the challenged claims.” The Board explained that Patent Owner had previously argued in the ’046 proceeding that Petitioner had failed to establish that RFC 1034 was sufficiently accessible. Therefore, the Board found that this was not an “additional issue,” and even if it were considered as such, Patent Owner did not explain how it would adversely impact the proceeding.

The Board finally addressed specifics regarding how the trial would proceed in light of the joinder. The joined petitioners would file consolidated filings, and Apple, the instant Petitioner, could request a separate filing to address issues unique to Apple. Apple would also be bound by the discovery agreements in the ’046 proceeding, and no additional cross-examination time would be granted.

Apple, Inc. v. VirnetX Inc., IPR2016-00062
Paper 14: Decision on Institution of Inter Partes Review
Dated: January 25, 2016
Patent: 6,502,135 B2
Before: Michael P. Tierney, Karl D. Easthom, and Stephen C. Siu
Written by: Siu
Related Proceeding: IPR2015-01046