Takeaway: In a motion for joinder, the petitioner must (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial scheduling of the existing proceeding; and (4) specifically address how briefing and discovery may be simplified.

In its Decision, the Board denied institution of inter partes review of claims 1-12 and 36-49 of the ’854 Patent and denied Petitioner’s motion for joinder with Apple Inc. v. Arendi S.A.R.L., IPR2014-00207.

The Board began by addressing the Motion for Joinder under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(b) as a party to IPR2014-00207. The Board noted that although 35 U.S.C. § 315(d) bars inter partes review when a petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent, the one-year bar does not apply to a request for joinder.  In this case, Petitioner was served with a complaint asserting infringement of the ’854 Patent more than a year prior to filing the Petition; therefore, if not joined with IPR2014-00207, the Petition would be time-barred.

The Board noted that Petitioner, as the moving party, has the burden of proof to establish entitlement to the requested relief. The Board then stated that a motion for joinder must (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial scheduling of the existing proceeding; and (4) specifically address how briefing and discovery may be simplified.  Petitioner’s Motion alleged that joinder is appropriate because both proceedings “involve[] the same patent, the same claims, the same prior art, and the same single instituted ground,” as well as claim charts that are “substantially identical.”  Therefore, there are no new issues that may complicate or delay the existing proceeding.

However, the Board found that the Motion fails to specify the differences between its Petition and the petition in the existing proceeding and fails to state how the claim charts are “substantially identical.” The Board found that despite Petitioner’s assertion that no new issues are presented in its Petition, the expert declaration introduces new argument and evidence that was not presented in the existing proceeding.

The Board also found that although Petitioner states that there will be no impact on the trial schedule for the existing proceeding, it failed to set forth how briefing and discovery are simplified other than suggesting that Petitioner and Patent Owner are allotted seven extra pages to address the new issues. Also, while Petitioner stated that it will work with the petitioner in the existing proceeding to coordinate expert testimony and discovery, Petitioner did not state whether the petitioner in the existing proceeding has also agreed to this.  The Board also found that Petitioner’s submission of evidence from its own declarant in order to protect itself in the event that the other petitioner settles and to submit non-redundant evidence was not fully explained.  Therefore, in view of the facts and circumstances of this case, the Board found that Petitioner did not meet its burden to show that joinder is appropriate.

Turning then to the denial of inter partes review, as admitted by Petitioner, it was served with a complaint alleging infringement of the ’854 Patent more than one year prior to the date of filing of the instant Petition.  Therefore, because joinder was denied, the Petition is barred by statute.

Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC v. Arendi S.A.R.L., IPR2014-01144
Paper 11: Decision Denying Inter Partes Review and Joinder
Dated: October 2, 2014
Patent: 7,496,854 B2
Before: Howard B. Blakenship, Sally C. Medley, and Trevor M. Jefferson
Written by: Jefferson
Related Proceedings: Arendi S.A.R.L. v. Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC, No. 1:12-cv-01598 (D. Del.); Apple Inc. v. Arendi S.A.R.L., IPR2014-00206 and IPR2014-00207