Takeaway: The party filing a motion for joinder bears the burden of showing that joinder is appropriate.

In its Decision, the Board denied Petitioner’s Motion for Joinder, which had been filed more than three months after oral argument had taken place and within two months of an upcoming statutory due date for the Board to issue its final written decision. At the time of the filing of the Motion for Joinder, all events for the trial before the Board had concluded except for the issuance of the Board’s final written decision.

The Motion for Joinder had sought to join the instant ’419 proceeding with IPR2014-00646, which has been instituted with respect to the same ’057 patent in response to a petition filed by Mercedes-Benz. The trial for the Mercedes IPR was in its early stages, and recently the parties to that proceeding had filed a Joint Motion to Terminate.

In support of its Motion for Joinder, Petitioner asserted that joinder of the two proceedings “would simply consolidate the issues such that the patentability of the claims over Lemelson [U.S. Patent No. 6,553,130] is resolved all at once (i.e., in October 2015 when a final written decision will be due in the Mercedes IPR) and on a complete and harmonized record.” The Board disagreed with this position, noting that “Allowing [Petitioner], who is otherwise precluded from raising a new substantive matter in this proceeding, to join the Mercedes IPR, in which that matter is not precluded, prejudices [Patent Owner], particularly when the parties in the Mercedes IPR have filed a Joint Motion to Terminate.”  The Board also noted that allowing the requested joinder would effectively amount to a 10-month stay in the ’419 proceeding; that there is no substantial overlap between the ’419 proceeding and the Mercedes IPR; and that granting of the requested joinder would not result in “efficient administration of the Office.”

Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00419 
Paper 54: Decision on Motion for Joinder
Dated: December 5, 2014 
Patent: 6,772,057 B2 
Before: Jameson Lee, Trevor M. Jefferson, and Lynne E. Pettigrew
Written by: Lee