Takeaway: A motion for joinder likely will be denied if filed after the one-month deadline after institution of the proceeding to which joinder is requested. Also, a motion for joinder likely will be denied if the proceeding to which joinder is requested is terminated.

In its Decision, the Board denied Petitioner’s Motion for Joinder and denied institution ofinter parties review as to the challenged claims (10, 15, 16, 18, 25, 31-33, 36, and 38) of the ’280 Patent.  Petitioner filed its Petition along with a Motion for Joinder requesting to join Rackspace US, Inc. v. PersonalWeb Techs. LLC, IPR2014-00059 (“the ’059 proceeding”).  The Board had instituted the same grounds of unpatentability over the same claims raised in Petitioner’s Petition.

The Board stated that 35 U.S.C. § 315(b) bars institution of inter partes review when the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent, but the bar does not apply to a request for joinder.  The record indicates that Petitioner was served with a complaint alleging infringement of the ’280 Patent more than one year before filing the Petition; therefore, absent joinder, the Petition is time barred.

The Board further stated that 37 C.F.R. § 42.122(b) provides that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution dateof any inter partes review for which joinder is requested.”  Petitioner failed to file its Motion for Joinder within one month after institution in the ’059 proceeding.  Petitioner requested that the Board exercise its discretion under § 42.5(b) to waive the timing requirement for filing the Motion for Joinder.  Specifically, Petitioner argued that the parties in the ’059 proceeding stipulated to a 30 day extension for DUE DATES 1 and 2, and thus filing its Petition and Motion for Joinder 60 days after institution resulted in the request being made at a time in the proceeding that was desired under 37 C.F.R. § 42.122(b).  The Board refused to waive the timing requirement, because the parties stipulating to new dates does not constitute a special circumstance that would persuade the Board to waive the one-month time limit for Petitioner to file its Motion for Joinder.

In addition to the Motion for Joinder being untimely, the Board also found that the Motion was moot because the ’059 proceeding was terminated by the parties in that proceeding, resulting in no proceeding for Petitioner to join.

Google Inc. and YouTube, LLC v. Personal Web Technologies, LLC and Level 3 Communications, LLC, IPR2014-00977
Paper 10: Decision Denying Petitioner’s Motion for Joinder and Denying Institution of Inter Partes Review 
Dated: October 30, 2014 
Patent: 6,415,280 B1
Before: Kevin F. Turner, Joni Y. Chang, and Michael R. Zecher 
Written by: Zecher
Related Proceeding: Rackspace US, Inc. v. PeronalWeb Techs. LLC, IPR2014-00059