Takeaway: The Board may deny a request to file a motion for joinder where timing differential between petitions would make any logistical accommodations necessary to synchronize the proceedings prejudicial to patent owner and where the later-filed petition challenges additional claims.

In its Order, the Board denied Petitioner’s motion for leave to file a motion for joinder. The Board had previously conducted a conference call with counsel for Petitioner and Patent Owner, where “Petitioner requested authorization to file a Motion for Joinder to join this proceeding with IPR2015-01706, which is directed to the same patent and in which a trial was instituted on February 9, 2016, in order to obtain certain scheduling and logistical efficiencies.”

Patent Owner “opposed the request because, among other reasons, the five month gap between the filing of the relevant Petitions would make any logistical accommodations necessary to synchronize the proceedings prejudicial primarily to Patent Owner.” The Board also noted “that the uncertainty as to the status of claims 13–15, which were not instituted on in IPR2015-01706 but are challenged in this proceeding, adds additional complexity to any potential joinder.” The Board denied Petitioner’s request for authorization to file a motion for joinder “for the above reasons, as well as the reasons set forth during the call.”

Great West Casualty Co., et al. v. Intellectual Ventures II, LLC, IPR2016-00453
Paper 8: Order on Conduct of Proceeding
Dated: February 22, 2016
Patent: 7,516,177 B2
Before: Michael W. Kim, Peter P. Chen, and Robert A. Pollock
Written by: Kim
Related Proceedings: IPR2015-01706