Takeaway: A motion for joinder will likely be denied when the same petitioner is merely including arguments regarding the same patent at issue that could have been included in the original petition.

In its Decision, the Board denied Petitioner’s Motion for Joinder and denied institution of inter parties review as to the challenged claims (1, 4, 5, 8, 9, 11-15, 18, 19, 22, 23, and 25-28) of the ’145 Patent.  This is Petitioner’s Second Petition involving the same parties and same patent.  The first is instituted trial proceeding Reloaded Games, Inc. v. Parallel Networks LLC, IPR2014-00136 (“the ’136 proceeding”).  Petitioner concurrently filed the Motion for Joinder of the Second Petition with the ’136 proceeding.

The Board stated that 35 U.S.C. § 315(b) bars institution of inter partes review when the petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent, but the bar does not apply to a request for joinder.  The record indicates that Petitioner was served with a complaint alleging infringement of the ’145 Patent more than one year before filing the Second Petition; therefore, absent joinder, the Second Petition is time barred.

In determining whether joinder is appropriate, the Board has discretion and grants joinder on a case-by-case basis taking into account the particular facts of that case. Petitioner stated that its request for joinder is “substantively appropriate under the circumstances” because the Second Petition involves the same parties, raises a limited number of additional issues, will not complicate the ’136 proceeding, and is directed to issues that will already be resolved in the ’136 proceeding.  Petitioner also agreed to forfeit a reasonable portion of its response period in the Second Petition and to one set of briefing for all of its papers.  Petitioner also asserted that discovery will be simplified because it relies on the same expert declaration for both proceedings.  Patent Owner states that the Second Petition is merely a responsive pleading to incorporate arguments that should have been in the petition for the ’136 proceeding; therefore, if joinder is allowed, it will set a precedent of allowing a single petitioner to attack the same claims through the filing of serial sixty page petitions.  Further, Patent Owner noted that Petitioner did not provide any reasons why it could not have asserted the allegations of the Second Petition in the petition in the ’136 proceeding.

The Board agreed with Patent Owner, specifically that Petitioner is merely seeking a second bite at the apple and that Petitioner did not raise any grounds of unpatentability that could not have been raised when filing the petition in the ’136 proceeding. Petitioner admitted that the Second Petition merely adds citations to the prior art in the ’136 proceeding and stated this was based on the Board’s construction of “allowing” in the ’136 proceeding.  The Board was not persuaded because it stated that its construction is based on the plain and ordinary meaning and was not difficult to foresee.

Reloaded Games, Inc. v. Parallel Networks LLC, IPR2014-00950
Paper 12: Decision Denying Petitioner’s Motion for Joinder and Denying Institution of Inter Partes Review
Dated: October 22, 2014
Patent: 7,188,145 B2
Before: Kristen L. Droesch, Brian J. McNamara, and Hyun J. Jung
Written by: Jung
Related Proceeding: IPR2014-00136