/>iTakeaway: A motion for joinder that is viewed by the Board as merely attempting to seek rehearing of an earlier decision not to institute trial will be denied.
In its Decision, the Board denied Petitioner’s request to join the instant inter partes review proceeding (IPR2014-00574) with IPR2013-00562. Petitioner had filed four other inter partes review petitions against patents owned by Patent Owner in the instant proceeding (IPR2014-00574) and in IPR2014-00575, IPR2014-00576, and IPR2014-00577, with each of these petitions being accompanied by a motion for joinder. This Decision by the Board addressed the Motion for Joinder filed in IPR2014-00574, and the other motions for joinder are being addressed in separate decisions for the other three proceedings. The Board’s denial of the Petitioner’s Motion for Joinder meant that the Petition in the instant proceeding was denied as well, as being time-barred under 35 U.S.C. §315(b)(1).
The Petition in the instant proceeding (IPR2014-00574) challenged claims 1, 2, 6, 7, 11-13, 31, 32, 36, 37, and 41-43 of the ’604 patent and, as mentioned, was accompanied by a Motion for Joinder seeking to join the instant proceeding with IPR2013-00562 involving these same claims of the ’604 patent. Notably, in IPR2013-00562, the Board declined to institute review on one of Petitioner’s asserted grounds, i.e., that claims 1, 2, 31, and 32 of the ’604 patent would have been obvious in view of Chang and Smith, for redundancy reasons.
Petitioner’s bases in support of its Motion for Joinder included the following reasons: “changed circumstances” occurring after the earlier petitions were filed that “were unknown and unanticipated” at that time; and positions taken by Patent Owner in the concurrent patent infringement litigation that are purportedly inconsistent with those being taken before the PTAB. In view of these positions, Petitioner sought to have the Board reverse its earlier redundancy position, add the ground based on Chang and Smith to the proceedings, and institute a trial on four additional obviousness challenges each adding Smith as a reference. Patent Owner, in opposition, asserted that the Motion for Joinder was merely an attempt “to seek rehearing of the Board’s Decision not to institute trial on ‘the exact same grounds of unpatentability’ as in IPR 2013-00562” involving Chang and Smith; and that granting the Motion for Joinder would negatively impact the schedule and result in significant burden on Patent Owner.
The Board’s analysis of these positions began by noting that ground 1 in the instant proceeding is exactly the same as ground 2 in IPR 2013-00562, namely that claims 1,2, 31, and 32 of the ’604 patent would have been obvious over Chang and Smith. It was Petitioner’s position that the Petition in IPR 2014-00562 proposed an alternative ground of unpatentability based on the combination of Chang and Smith, because Petitioner anticipated that Patent Owner would attempt to narrow its claim construction in order to distinguish over Chang. Petitioner went on to assert that because Patent Owner’s Preliminary Response had now “criticized” Chang, Petitioner should be able to reassert the alternative combination based on Chang taken together with Smith. The Board was not persuaded by these arguments, finding that it has already considered the combination of Chang and Smith in IPR2013-00562 “in light of [Petitioner’s] prediction that [Patent Owner] would narrow [its] claim construction,” and found Smith to be redundant of Chang. Primarily because the Board viewed this strategy as Petitioner merely seeking a rehearing of this previous decision by the Board, the Board denied Petitioner’s Motion for Joinder, which then led the Board to deny the Petition in the instant proceeding altogether, as being time-barred under 35 U.S.C. §§ 315(c).
Microsoft Corporation v. Enfish, LLC, IPR2014-00574
Paper 13: Decision on Motion for Joinder
Dated: September 29, 2014
Patent 6,151,604
Before: Thomas L. Giannetti, Bryan F. Moore, Scott A. Daniels, and Barbara A. Parvis
Written by: Daniels
Related Proceedings: Enfish, LLC v. Microsoft Corporation, et al., Case No. CV12-7360 MRP (MRWx) filed in the Central District of California; IPRs 2013-00559, 2013-00560, and 2013-00561 (all involving Patent Owner’s ’775 patent); and IPRs 2013-00562 and 2013-00563 (both involving the ’604 patent at issue in the instant proceeding)
