Takeaway: If a petition is timely filed and includes the same grounds of unpatentability as a previous petition, then it is likely the Board will grant a motion for joinder. 

In its Decision, the Board instituted inter partes review of all challenged claims (1-20) of the ’216 Patent, and granted Petitioner’s Motion for Joinder with IPR2014-01453 (“the ’1453 IPR”).

The Board did not discuss the merits of the challenges. Instead, it stated that it reviewed the Petition and the Preliminary Response, and in view of the challenges to the ’216 Patent in this Petition and the petition in the ’1453 IPR, it instituted review in this proceeding on the same grounds as those on which it instituted review in the ’1453 IPR.

The Board then turned to the Motion for Joinder. The Board stated that Petitioner bears the burden of proving that it is entitled to the requested relief. The Board noted that the Petition was timely, as it was filed less than a month after institution of the ’1453 IPR. Petitioner argued that joinder will not impact the Board’s ability to complete its review in the statutorily-prescribed time because it proposed an accelerated schedule in this proceeding. It also stated that the grounds asserted in this Petition and in the ’1453 IPR are the same, and that the arguments are substantially the same, including support of the same declaration of the same technical expert. Patent Owner opposed joinder, contending that it would impact the trial schedule and that its Preliminary Response includes new arguments not previously considered in the ’1453 IPR. Petitioner stated that it did not have any intention of conducting other depositions, but simply seeks to join the ongoing IPR.

The Board was persuaded that Petitioner demonstrated that joinder would avoid duplication and promote efficiency. The Board noted that the Petition has the same challenges as in the ’1453 IPR, and involves the same prior art. The Board was not persuaded by Patent Owner’s argument that accelerating the decision-making with respect to new arguments made in the Preliminary Response would give the parties an unfair advantage in the ’1453 IPR because the Preliminary Response was filed after the response in the ’1453 IPR.
Perfect World Entertainment, Inc. v. Uniloc USA, Inc. and Uniloc Luxembourg S.A., IPR2015-01026
Paper 10: Decision on Institution of Inter Partes Review and Grant of Motion for Joinder
Dated: August 3, 2015
Patent 5,490,216 C2
Before: William V. Saindon, Donna M. Praiss, and Patrick R. Scanlon
Written by: Praiss