Macronix v. Spansion LLC: Decision Denying Motion for Joinder
Tuesday, August 19, 2014

Takeaway: Joinder may not be granted if the moving party is not able to persuade the Board that the patentability issues raised in a proceeding may be resolved in the proposed joined proceeding without substantially affecting the schedule.

In its Decision, the Board denied Petitioner’s Motion for Joinder with Case IPR2014-00108.  It was the Board’s position that Petitioner had not satisfied its burden in showing entitlement to the requested joinder.

Petitioner had filed a Petition to Institute inter partes review of claims 1-14 of the ‘027 patent in Case IPR2014-00108 on November 8, 2013.  The Board granted that Petition and instituted inter partes review of claims 1-6 and 8-13 of the ‘027 patent in Case IPR2014-00108 on May 8, 2014.  Petitioner then filed a Petition and Motion for Joinder in the instant Case IPR2014-00898 on June 4, 2014, challenging claims 7 and 14 of the ‘027 patent.  A proposed revised schedule was filed by Petitioner in Case IPR2014-00108 as well, in the event Petitioner’s Motion for Joinder in the instant Case IPR2014-00898 was to be granted.

The Board has discretion to join an inter partes review with anotherinter partes review under 35 U.S.C. § 315(c).  Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. The Board determines whether to grant joinder on a case-by-case basis, placing emphasis on securing “the just, speedy, and inexpensive resolution of every proceeding.”

Petitioner, as the moving party, bore the burden of proving that it was entitled to joinder in the instant proceeding. Thus, Petitioner’s Motion for Joinder was required to: indicate the reasons why joinder was appropriate in the present situation; identify any new grounds of unpatentability asserted in the petition; explain any impact joinder would have on the trial schedule for the existing proceeding; and specifically address how briefing and discovery could be simplified.

To this end, Petitioner asserted that joining this case with Case IPR2014-00108 would have only minimal impact on Patent Owner, because Petitioner relies on the same declarant and adopts the same primary prior art reference in both cases, and “asserts only a few additional references.”  Petitioner also asserted that Patent Owner should have already considered the proposed combination of references in the co-pending International Trade Commission (ITC) investigation and that the proposed revised schedule would add only seven weeks to the Due Dates set forth in the existing Schedule.  Patent Owner opposed Petitioner’s Motion for Joinder, alleging that the Petition in this proceeding “raises numerous substantive issues that are not present in Case IPR2014-00108” and that the proposed revised schedule would prejudice Patent Owner.

After taking into account the various asserted positions, the Board concluded that “joinder would have a significant adverse impact on [its] ability to complete the existing proceeding in a timely manner,” regardless of which party’s proposed scheduled was adopted. The Board also noted that Case IPR2014-00108 “was filed more than eight months ago and is already well underway, with Patent Owner having cross-examined Petitioner’s Declarant and filed its response, and Petitioner’s reply being due on October 6, 2014.” Thus, a lengthy delay would result in the ongoing review if joinder was granted at this stage.  Moreover, the Board noted that Patent Owner had objected to Petitioner’s proposed revised schedule.

Thus, the Board denied Petitioner’s Motion for Joinder because Petitioner had not persuaded the Board that the patentability issues raised in the instant Case IPR2014-00898 could be resolved “in a joined proceeding without substantially affecting the schedule in Case IPR2014-00108,” and because Petitioner had not “satisfied its burden of proof in showing entitlement to the requested relief—namely, joinder with Case IPR2014-00108.”

Macronix International Co., Ltd., Macronix Asia Limited, Macronix (Hong Kong) Co., Ltd., and Macronix America, Inc. v. Spansion LLC, IPR2014-00898
Paper 15: Decision on Motion for Joinder
Dated: August 13, 2014
Patent: 7,151,027 B1
Before: Debra K. Stephens, Justin T. Arbes, and Richard E. Rice
Written by: Rice
Related Proceedings: IPR2014-00108; IPR2014-00105; co-pending International Trade Commission (ITC) investigation

 

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