Takeaway: If the Board grants a Motion for Joinder, it may limit the scope of Petitioner’s participation by, for example, not permitting it to take any discovery, file papers, or participate in depositions or hearings without prior authorization.

In its Decision, the Board instituted an inter partes review and granted Petitioner’s Motion for Joinder.

The Board first considered whether to institute inter partes review. In response to a Board order, Petitioner filed a Notice Regarding Joinder Participation in which it “expressly agreed to limit its challenge to the same ground on which [the Board] instituted trial in the [Existing] IPR.” With respect to the ground on which trial was instituted in the Existing IPR, “Patent Owner’s Preliminary Response in this proceeding . . . did not raise substantially different arguments or present substantially different evidence” from what the Board had already considered in the course of instituting trial in the Existing IPR. Accordingly, the Board instituted an inter partes review in the proceeding on the same ground as it did in the Existing IPR.

The Board then considered whether to grant Petitioner’s Motion for Joinder. Petitioner bears the burden of proving that the Board should grant its motion. As the Board explained, “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 this case, the Petition and Motion for Joinder were timely filed within a month after the institution date of the Existing IPR. In its Motion for Joinder, Petitioner argued that “in the event of joinder, the schedule in the [Existing] IPR would not be affected, nor would [Patent Owner] be prejudiced by joining this proceeding to the [Existing] IPR” because, inter alia, there are only minor differences between the Petitions and Petitioner will “coordinate with [Petitioner in Existing IPR] to consolidate filings, manage the questioning at depositions, manage presentations at the hearing, ensure that briefing and discovery occur within the time normally allotted, and avoid redundancies.” Patent Owner opposed the Motion for Joinder, arguing that the Petition is “substantially duplicative to the currently pending [Existing] IPR” and “introduces new information that would unnecessarily complicate the [Existing] IPR.”

The Board agreed with Petitioner that joinder was appropriate under the circumstances. In its Order, however, the Board stated that, “unless given prior authorization by the Board, [Petitioner] is not permitted to file papers engage in discovery, or participate in any deposition or oral hearing” but may appear in the Existing IPR so that it may receive notification of filings and may attend depositions and oral hearing.” Petitioner is required to “request a conference call to obtain authorization from the Board” if it believes that it is necessary to take any further action.

Finally, the Board addressed Patent Owner’s argument that the Petition is time-barred because one of Petitioner’s privies was served a complaint alleging infringement of the challenged patent more than a year before the filing of the Petition. The Board concluded that it “need not address Patent Owner’s arguments” because it granted the motion for joinder.

Mircosoft Corp. v. IPR Licensing, Inc., IPR2015-00074
Paper 21: Decision on Institution of Inter Partes Review and Grant of Motion for Joinder
Dated: March 4, 2015
Before: Miriam L. Quinn, Sally C. Medley, and Beverly M. Bunting
Written by: Bunting
Related Proceedings: ZTE v. IPR Licensing, Case IPR2014-00525