Takeaway: The Board granted a Motion for Joinder where the proceeding that the Petitioner was going to join was in the process of being settled and terminated, but a Motion for Termination had not been filed.

In its Decision, the Board granted Petitioner’s Motion for Joinder and granted institution of inter parties review as to the challenged claim 7 of the ’811 Patent. Petitioner filed its Petition along with a Motion for Joinder requesting to join 505 Games Interactive, Inc. v. Babbage Holdings, LLC, IPR2014-00954 (“the ’954 proceeding”). The Board had instituted the same grounds of unpatentability over the same claim raised in Petitioner’s Petition.

The Petition was filed within one month after the institution date of the ’954 proceeding. The only difference in the Petitions was that this Petition included claim constructions adopted by the Board in the Decision on Institution in the ’954 proceeding. Petitioner represented that, absent settlement of the ’954 proceeding, it would take an understudy role by not submitting any separate filings to the PTO unless it disagrees with the positions of the current petitioners, and then the filing would not exceed seven pages. Petitioner also represented that it would adhere to the deadlines set forth by the Scheduling Order in the ’954 proceeding and cooperate on all briefing and discovery. The Petitioner of the ’954 proceeding did not oppose Petitioner’s Motion for Joinder.

Patent Owner opposes the Motion for Joinder on the ground that it and the ’954 proceeding petitioners are going to settle and file a motion to terminate the ’954 proceeding as soon as the litigation dismissals are finally entered by the district courts. Patent Owner also argued that Petitioner’s decision to wait eight months to file its petition and not join the original petitioners is “prejudicial to Patent Owner (and perhaps the other petitioners), at the very least because the Patent Owner settled the underlying litigation in part under the assumption that such settlements also would have the effect of disposing of the IPR.”

After considering the Motion and Opposition, the Board was persuaded that Petitioner had demonstrated that joinder will not unduly complicate or delay the ’954 proceeding, and was not persuaded by Patent Owner’s arguments. The Board stated that it was not persuaded by Patent Owner because, at the time, no Motion to Terminate had been filed in the ’954 proceeding. Further, because the ’954 proceeding petitioners will no longer be involved in the proceeding, it is unlikely that Petitioner will need to coordinate, and thus it is unlikely that such coordination will disrupt the schedule. Accordingly, the Board granted Petitioner’s Motion for Joinder.

Nintendo of America, Inc. and Nintendo Co., Ltd. v. Babbage Holdings, LLC, IPR2015-00568
Paper 12: Decision Granting Petitioner’s Motion for Joinder and Granting Institution of Inter Partes Review
Dated: March 18, 2015
Patent: 5,561,811
Before: Meredith C. Petravick, Kalyan K. Deshpande, and Matthew R. Clements
Written by: Clements
Related Proceeding: 505 Games Interactive, Inc. v. Babbage Holdings, LLC, IPR2014-00954