Takeaway: A motion for joinder should: (1) set forth 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.

In its Decision, the Board granted Petitioner’s Motion for Joinder and instituted inter partesreview of claims 1, 2, 6-8, and 12-14 of the ‘151 patent. Petitioner sought to join a pending proceeding against the ’151 patent, Mangrove Partners Master Fund, Ltd. v. VirnetX Inc., Case IPR2015-01047.

Joinder may be authorized when warranted, but the decision is discretionary. See 35 U.S.C. § 315(c). “A motion for joinder should: (1) set forth 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.”

Here, the requirement of being filed within one month of institution of trial in IPR2015-01047 was met. In view of the “identity of each of the challenges in the instant Petitioner to at least one challenge presented in the petition in IPR2015-01047,” the Board institutedinter partes review on the same grounds.

The Board rejected Patent Owner’s argument that “[g]iven the number of serial challenges filed against the ’151 patent, and the fact that several are currently pending at the Office, the board should invoke its authority under 35 U.S.C. §§ 315(d) and 325(d) to deny institution of this challenge.” The Board also rejected Patent Owner’s argument that “reliance on expert testimony is required or that the absence of expert testimony alone indicates the failure to demonstrate a reasonable likelihood of prevailing in proving unpatentability of a challenged claim.” As for Patent Owner’s argument against an unjustified “increase [of] the complexity” of the hearing, the Board was not persuaded because Patent Owner “does not demonstrate sufficiently that any alleged difference in rationale presented by Petitioner would be sufficiently different and complex to preclude joinder.” The Board further rejected Patent Owner’s unsupported arguments that “Black Swamp’s purpose for filing its petition is nothing more than an attempt at extortion” or that “allowing another party to join . . . would further tip the scale of resources in favor of the petitioner.”

The Board, however, ordered certain efficiencies to occur. First, the Board ordered that all filings “by Black Swamp in IPR2015-01047 shall be consolidated with the filings of the IPR2015-01047 petitioner (i.e., Mangrove), unless the filing involves an issue unique to Black Swamp or states a point of disagreement related to the consolidated filing.” In such a case, “Black Swamp may make a separate filing of no more than five pages, without prior authorization of the Board.” Second, the Board stated that “Black Swamp is bound by any discovery agreements, including deposition arrangements, between Patent Owner and the IPR2015-01047 petitioner and shall not seek any discovery beyond that sought by the IPR2015-01047 petitioner (i.e., Mangrove)” and that Patent Owner “shall not be required to provide any additional discovery or deposition time as a result of joinder.” Finally, “IPR2015-01047 petitioner shall designate attorneys to conduct the cross-examination of any witness produced by Patent Owner and the redirect examination of any other witness, within the timeframes set forth in 37 C.F.R. § 42.53(c) or agreed to by Patent Owner and the IPR2015-01047 petitioner (i.e., Mangrove)” and “if an oral hearing is requested and scheduled, the IPR2015-01047 petitioner (i.e., Mangrove) shall designate attorney(s) to present at the oral hearing in a consolidated argument.”

Black Swamp IP, LLC v. VirnetX Inc., IPR2016-00167
Paper 12: Decision on Institution of Inter Partes Review
Dated: February 4, 2016
Patent: 7,490,151 B2
Before: Michael P. Tierney, Karl D. Easthom, and Stephen C. Siu
Written by: Siu