Takeaway: If a petitioner seeks joinder with an earlier-filed proceeding that is one of several related proceedings, petitioner’s Motion for Joinder should address the impact of joinder on all of the related PTAB proceedings, not just the one it seeks to join. 

In its Decision, the Board denied Petitioner’s Motion for Joinder. Petitioner filed a Petitioner requesting an inter partes review of claims 1, 11, 16, 18, and 22-24 of U.S. Patent No. 7,801,304 along with a Motion for Joinder seeking to join the instant proceeding with Amazon.com, Inc. and Amazon Web Services, LLC v. Personalized Media Comm., LLC, IPR2014-01532.

The Board began by reviewing the legal standards applicable to a Motion for Joinder, noting that it has discretion to join an inter partes review with another inter partes review where the joining party properly filed a petition under Section 311. The Board “determine[s] whether to grant joinder on a case-by-case basis, taking into account the particular facts of each case, substantive and procedural issues, and other considerations.” The factors considered include “(1) time and cost considerations, including the impact joinder would have on the trial schedule; and (2) how briefing and discovery may be simplified”  Also, in exercising its discretion, the Board is “mindful that patent trial regulations, including the rules for joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”

The Board then considered the parties’ arguments concerning the substantive and procedural issues involved in the proceeding.

With respect to substantive issues, Petitioner contended that joinder with IPR2014-01532 is appropriate because (1) its motion is timely, (2) “the Petition filed in this proceedings raises no new issues as it is nearly identical to the Petition filed” in the earlier IPR, and (3) “granting joinder would lead to efficiencies and consistent results and neither [the other Petitioner] nor Petitioner would be prejudiced.” Patent Owner contended that joinder “would complicate and delay” the earlier IPR because Patent Owner intends to seek additional discovery concerning potential additional real parties-in-interest to the instant proceeding. The Board concluded that “[a]lthough the grounds of unpatentability, claim construction, and supporting evidence in this proceeding are nearly identical to the grounds of unpatentability, claim construction, and supporting evidence” in the earlier IPR, this proceeding includes at least one new substantive issue—the real party-in-interest inquiry relating to Petitioner. Based on statements made in the Petition (e.g., that Petitioner was “founded by intellectual property professionals”), the Board determined that “it is not unreasonable for Patent Owner to seek authorization for additional discovery in order to determine what companies, if any, fund and control Petitioner.” The Board then concluded that the presence of a new substantive issue weights in favor of denying Petitioner’s Motion for Joinder.

With respect to procedural issues, Petitioner contended that joinder would have a “minimal impact” and would not interfere with the Board’s ability to timely complete the proceeding. Petitioner represented that it “seeks to be a ‘fly on the wall’ in the joined proceeding, only participating in the proceeding in the event that [the first petitioner] terminates its involvement.” Patent Owner argued that the proceeding would be disrupted if the first petitioner terminated its participation “because Petitioner has not retained [the first petitioner’s] declarants and may need to rely upon testimony from new declarants and/or new evidence.”

The Board noted that IPR2014-01532 is one of seven related IPRs between Patent Owner and the other petitioner and that the schedules in those proceedings have been “coordinated and synchronized.” Petitioner sought to join two of the proceedings but did not “identify how its joinder to two cases would affect the schedule in the other five cases.” The Board concluded that the impact of joinder on the other cases had not been adequately addressed and that joinder “likely would affect” its ability to timely complete all seven proceedings and, thus, weighs in favor of denying the Motion.

Next, the Board considered whether there would be prejudice to Petitioner if joinder was denied.  Patent Owner argued that Petitioner is a non-practicing entity that is not “exposed to threats of patent infringement litigation” and would be “free to refile its Petition” if the other IPR proceedings are terminated. The Board was persuaded by Patent Owner’s arguments, stating that “on the current record, [the Board is] aware of no impediment to Petitioner to refile its Petition at a later time should it be dissatisfied with the [other] proceeding.”

The Board concluded by stating that “Petitioner has not met its burden of demonstrating that joinder is warranted under the particular circumstances of this case” and then denied the Motion for Joinder.

Unified Patents, Inc. v. Personalized Media Communications, LLC, IPR2015-00521 Paper 14: Decision – Petitioner’s Motion for Joinder
Dated: June 8, 2015
Patent: 7,801,304 B1 Before: Karl D. Easthom, Trenton A. Ward, and Georgianna W. Braden Written by: Ward Related Proceedings: