Takeaway: The Board may not allow joinder by a party that is already a party to the proceeding to which joinder is sought. 

In its Decision, the Board denied Petitioner’s Motion for Joinder and denied institution of inter partes review of the challenged claims, claims 6, 15, and 16, of the ’566 Patent.  This Petition involves the same parties and same patents at issue as SkyHawke Technologies, LLC v. L&H Concepts, LLC, IPR2014-00438 (“the ’438 proceeding”), with which Petitioner sought joinder.

Regarding the Motion for Joinder, Petitioner argued that joinder was appropriate because joinder will promote efficient determination of the patentability of the patent at issue, there will be no prejudice from the joinder, and Petitioner will suffer undue prejudice if there is no joinder.  Patent Owner argued that the Motion should be denied because 35 U.S.C. § 315(c) provides for joinder of parties only, not issues, and does not contemplate joinder by someone who is already a party.  The Board agreed, holding that the statement “join as a party” indicates that only a person that is not already a party in the proceeding can join the proceeding.  The Board found that the term “any person” is limited by the overall language of § 315(c).  Further, the legislative history supports the view that there can only be joinder of a person who is not already a party to the proceeding.  Therefore, the Motion was denied.

The Board then noted that Petitioner was served with a complaint asserting infringement of the ’566 Patent more than a year before filing the Petitioner.  Because the Motion for Joinder was denied, the one-year bar applied, and the Petition was denied.

SkyHawke Technologies, LLC v. L&H Concepts, LLC, IPR2014-01485
Paper 13: Decision Denying Petitioner’s Motion for Joinder and Denying Institution of Inter Partes Review
Dated: March 20, 2015
Patent 5,779,566
Before: James T. Moore, Patrick R. Scanlon, and Mitchell G. Weatherly
Written by: Scanlon
Related Proceedings: IPR2014-00437; IPR2014-00438