iTakeaway: In order to show prejudice from joinder of proceedings, a patent owner would have to show how it would be affected differently if the proceedings were separate as opposed to joined.
In its Decision, the Board denied Patent Owner’s Request for Rehearing seeking reversal of the Board’s decision in IPR2014-00483 to institute inter partes review of claims 1-5, 7, 8, 10, 12, 15, and 17 of the ’174 Patent and to join IPR2014-00483 with the instant proceeding. Patent Owner argued that the ’483 IPR relies on an expert declaration that does not mention the ’274 Patent or how Provino applies to the ’274 Patent, that the Board abused its discretion by incorporating analysis from the ’403 IPR, and that the Board prejudiced Patent Owner by joining the two proceedings.
The Board found that Patent Owner had not shown an abuse of discretion or an overlooked material point, as required to succeed on a request for rehearing. The Board stated that the declarant in the ’483 IPR discussed Provino at length, the grandparent application to the ’274 Patent, and how Provino discloses the limitations of the ’274 Patent. Further, Petitioner included claim charts and argument showing how Provino disclosed the claim limitations recited in the ’274 Patent.
Patent Owner also argued that the ’483 IPR Petition is defective as lacking the explanation required by statute, but the Board found that Patent Owner did not specify a claim element missing from the showing. Patent Owner further argued that the Board’s incorporation of the ’403 Institution Decision into the ’483 IPR analysis was improper because the expert declaration supporting the ’483 IPR Petition was different from and discussed a different patent than the declaration in the ’403 IPR Petition. The Board found that Patent Owner did not point out any material differences between the two declarations, which involve the same declarant, challenged patents having the same or similar specification, and the same prior art, and Patent Owner did not show how these differences would amount to prejudice in one joined proceeding as compared to two separate proceedings.
Microsoft Corp. and Apple Inc. v. VirnetX Inc., IPR2014-00403
Paper 24: Decision on Request for Rehearing
Dated: October 3, 2014
Patent: 7,987,274 B2
Before: Michael P. Tierney, Karl D. Easthom, and Stephen C. Siu
Written by: Easthom
