iTakeaway: A motion for joinder may be denied when the petition accompanying the motion does not identify any new grounds of unpatentability as compared to the grounds asserted in the other proceeding to which joinder is being sought.
In this Decision, the Board addressed a Corrected Petition that Petitioner had filed challenging the patentability of claims 1, 3-5, 7-13, 17-28, 30-33, 35-37, 40-43, and 46-50 of the ’403 patent, which relates to a graphical user interface. The Board also considered a motion that Petitioner had filed seeking joinder with IPR2013-00292 also involving the ’403 patent.
The timeline associated with this proceeding, and others relating to it, reads in relevant part as follows: (1) the Board denied institution of inter partes review in IPR2013-00292 on November 19, 2013; (2) Petitioner filed a Request for Rehearing in IPR2013-00292 and, in the instant proceeding, filed a new Petition and Motion for Joinder with IPR2013-00292, on December 19, 2013; (3) Petitioner filed a Corrected Petition in the instant proceeding on January 9, 2014; (4) Patent Owner filed an Opposition to Petitioner’s Motion for Joinder in the instant proceeding on January 21, 2014; (5) the Board issued its Decision Denying Petitioner’s Request for Rehearing in IPR2013-00292 on January 29, 2014; (6) Petitioner filed a Reply in support of its Motion for Joinder in the instant proceeding on February 21, 2014; (7) Patent Owner filed its Preliminary Response in the instant proceeding on April 7, 2014; and (8) a conference call with the Board was conducted in the instant proceeding on April 16, 2014 to discuss issues relating the Motion for Joinder.
It is also relevant to note that Petitioner was served with a complaint alleging infringement of the ’403 patent on October 30, 2012, and that Petitioner filed its Petition in the instant proceeding more than one year later, on December 19, 2013. As noted by the Board, institution of inter partes review is usually barred when the Petition is filed more than one year after the petitioner is served with a complaint alleging patent infringement, but “this one-year time bar does not apply to a request for joinder.” Thus, in the instant proceeding, the Petition is barred if there is no joinder with IPR2013-00292.
The Board then indicated that it was not persuaded that Petitioner had shown that joinder was justified in the instant proceeding. As argued by Patent Owner, and found by the Board, the Petition in the instant proceeding does not identify any new grounds of unpatentability, i.e., it merely reasserts grounds of unpatentability previously asserted in IPR2013-00292. The Board also noted that joinder would significantly impact the schedule of IPR2013-00292. Thus, the Board denied Petitioner’s Motion for Joinder; which in turn led the Board to conclude that the Corrected Petition was not filed within the one-year time limit set forth in 35 U.S.C. § 315(b); which in turn resulted in the Board denying institution of trial in the instant proceeding.
Microsoft Corporation v. SurfCast, Inc., IPR2014-00271
Paper 20: Decision Denying Petitioner’s Motion for Joinder, and Denying Institution of Inter Partes Review
Dated: June 13, 2014
Patent 6,724,403
Before: Michael P. Tierney, Joni Y. Chang, and Matthew R. Clements
Written by: Clements
