Takeaway: A party need not seek authorization to file a motion for joinder if that motion is filed prior to, or within thirty (30) days of, the institution date for the inter partes review that the moving party seeks to join.

In its Order, the Board granted the Petitioner’s Motion for Leave to File Motion for Joinder in two separate proceedings. Petitioner filed two petitions for inter partes review of the ’759 Patent. According to Petitioner, those petitions (IPR2014-00781 and IPR2014-00782) are substantially identical to two petitions that Intel Corporation has filed (IPR2014-00445 and IPR2014-00446).

Petitioner argued that consolidating its proceedings with Intel’s proceedings would result in efficiencies for the parties and the Board. In a conference call, Intel indicated that it would not oppose Petitioner’s motion for joinder; however, Patent Owner opposed joining the proceedings, claiming that doing so would require it to file additional paperwork. Patent Owner further argued that a motion for joinder would be premature because the Board has not yet instituted inter partes review in Intel’s proceedings, so the motion would be moot if the Board denies Intel’s petitions.

The Board observed that its rules do not require a party to seek authorization to file a motion for joinder provided that the motion is filed within thirty (30) days of the institution date for the inter partes review that the moving party seeks to join. The Board emphasized that patent trial regulations, including the rules for joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. Accordingly, the rules permit a party to file a motion for joinder prior to the institution date of the proceeding to be joined. The Board also authorized Patent Owner to file an opposition to Petitioner’s motion for joinder, should Petitioner in fact choose to file one.

The Board then set forth the standard for motions for joinder. The moving party must:(1) set forth the 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 schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. Because Petitioner’s motion to join would precede the Board’s institution of Intel’s petition, the Board specified that Petitioner’s motion should explain whether it would withdraw non-instituted grounds of unpatentability should the Board institute an inter partes review with less than all of the asserted grounds of unpatentability in Intel’s proceedings.

Taiwan Semiconductor Manufacturing Company, Ltd. v. Zond LLC, IPR2014-00781; IPR2014-00782
Paper 5: Order on Motion for Leave to File Motion for Joinder
Dated: May 29, 2014
Patent 7,147,759 B2
Before: Kevin F. Turner, Debra K. Stephens, Joni Y. Chang, Susan L. C. Mitchell, and Jennifer M. Meyer
Written by: Chang