Takeaway: A patent owner’s decision to file a preliminary response raising arguments not presented in an instituted proceeding, and the timing of the filing of that preliminary response, could weigh against the Board’s decision whether to join the proceedings.

In its Decision, the Board denied Petitioner’s Motion for Joinder seeking to join the already-instituted CBM2014-00100 in light of the Board’s decision to institute trial in the instant Petition.

The instant Petition sought review of the same challenged claims of the ’191 patent as in the related proceeding based on the same prior art, declaration evidence, and ground of unpatentability. Petitioner indicated that the claim charts in both proceedings are identical and that Petitioner adopted the Board’s rationale set forth in the Decision to Institute the related proceeding as well the rationale of petitioner in the related proceeding. Thus, Petitioner concluded that “joinder would present no new issues that would complicate or delay the CBM2014-00100 proceeding, and joinder would not prejudice the parties or have any material impact on the trial schedule for the CBM2014-00100 proceeding.” The parties had also agreed upon procedures to simply briefing and discovery. In addition, Petitioner stated that the co-pending district court cases involving the same parties and patent had been stayed based on the parties’ agreement not to raise the invalidity challenge asserted in the related CBM proceeding.

After a conference call was held in the instant proceeding, Patent Owner timely filed its Preliminary Response, which included around twenty pages of arguments that were not argued in the related proceeding.

The Board began its analysis of the Motion for Joinder by stating that a decision whether to institute trial “is a necessary precursor to joining the review to another review.” In this case, Patent Owner filed a preliminary response more than four months after institution of CBM2014-00100 and more than three months after filing of the instant Petition. The Board found this to “undermine Petitioner’s contention that joinder would not have any material impact on the trial schedule.” In addition, the new arguments presented in the Preliminary Response “also undermine[d] Petitioner’s position that joinder would not prejudice the parties or have any material impact on the trial schedule.”

The Board noted that it was mindful of Patent Owner’s right to file a preliminary response and that the Board did not seek to limit that right in any way. In this case, however, the Board found that Patent Owner “made particular choices regarding when to file its preliminary response and what arguments to be included in its response” that undermined “factors favoring joinder” and deprived Patent Owner of any efficiencies provided by joinder. With respect to Petitioner, the Board noted that joinder was not the only option for raising the invalidity challenge in this forum. In particular, the Board noted that the “concurrently entered decision to institute the instant Petition also provides such an opportunity to Petitioner.”

Bank of the West v. Secure Axcess, LLC, CBM2015-00009
Paper 22: Decision on Motion for Joinder
Dated: April 13, 2015
Patent: 7,631,191 B2
Before: Barbara A. Benoit, Trenton A. Ward, and Georgianna W. Braden
Written by: Benoit
Related Proceedings: CBM2014-00100; Secure Axcess, LLC v. Bank of the West, Case No. 6:13-cv-00779 (E.D. Tex); Secure Axcess, LLC v. Santander Bank, N.A., Case No. 6:13-cv-00723 (E.D. Tex); Secure Axcess, LLC v. Ally Bank, Case No. 6:13-cv-00718 (E.D. Tex); Secure Axcess, LLC v. GE Capital Retail Bank, Case No. 6:13-cv-00720 (E.D. Tex); (E.D. Tex);Secure Axcess, LLC v. Raymond James & Associates, Inc., Case No. 6:13-cv-00785 (E.D. Tex); Secure Axcess, LLC v. Trustmark National Bank, Case No. 6:13-cv-00788 (E.D. Tex); and Secure Axcess, LLC v. Cadence Bank, N.A., Case No. 6:13-cv-00780 (E.D. Tex); Secure Axcess, LLC v. Nationwide Bank, Case No. 6:13-cv-00721 (E.D. Tex); Secure Axcess, LLC v. Commerce Bank, Case No. 6:13-cv-00782