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July 13, 2020

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Ubisoft, Inc. v. Uniloc USA, Inc. Denying Joinder With Terminated Proceeding and Denying Institution

Takeaway: The one year bar to granting a petition for inter partes review does not apply to a motion for joinder, but the Board will not grant joinder to a terminated proceeding.

In its Decision, the Board denied a Motion for Joinder and Petition requesting inter partesreview of the ‘216 patent.  Petitioner had requested to join a petition “instituted on the same grounds of unpatentability over the same claims at issue in this proceeding.”

The Board first addressed the Motion for Joinder.  As an initial matter the Board noted that Petitioner timely filed the motion for joinder within one month after institution of the related proceedings.  Although the rules bar inter partes review when a petition is filed more than one year after the petitioner is served with a complaint alleging infringement of the patent, the one-year time bar does not apply to a request for joinder.

As the moving party, Petitioner has the burden of proof in establishing entitlement to the requested relief, which is a matter of discretion for the Board.  Specifically, a “motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) specifically address how briefing and discovery may be simplified.”

In the related proceeding that Petitioner sought to join, the Board authorized inter partesreview, but the proceeding had since terminated after judgment was entered.  As such, “[b]ecause IPR2015-01207 is no longer pending, it cannot serve as a proceeding to which another proceeding may be joined.”  Motion for joinder was thus denied.  But, the Board noted, “[e]ven if IPR2015-01207 had not been terminated, other considerations weigh in favor of denying Petitioner’s Motion for Joinder.”  The “grounds and arguments now asserted by Petitioner are substantially identical to the grounds presented in [the related proceedings]” and Petitioner has not “explained sufficiently why the [related petition] did not contain the grounds and arguments set forth in the Petition in this proceeding.”  The Board further noted that it would exercise its discretion in denying the motion for joinder “to secure the just, speedy, and inexpensive resolution of every proceeding.”

Because the motion for joinder was denied, the one year bar applied.  Accordingly, the Petition for inter partes review was denied.

Ubisoft, Inc. v. Uniloc USA, Inc., IPR2016-00414
Paper 16: Decision Denying Inter Partes Review and Joinder
Dated: June 2, 2016
Patent: 5,490,216 C2
Before: William V. Saindon, Donna M. Praiss, and Patrick R. Scanlon
Written by: Praiss
Related Proceedings:  Eastern District of Texas C.A. Nos. 13-628, 14-577, 14-419; IPR2014-01453, CBM2014-00183 (institution denied).

© 2020 Faegre Drinker Biddle & Reath LLP. All Rights Reserved.National Law Review, Volume VI, Number 172


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The Intellectual Property Litigation Practice at Drinker Biddle & Reath LLP recognizes that a successful IP enforcement strategy can make an important contribution to a company's bottom line. Our attorneys help a wide variety of clients protect what is theirs and police the marketplace against infringements and unfair competitive practices.

Our attorneys have litigated infringement suits across a broad range of industries and technologies, including pharmaceuticals, medical devices, dental methods, computer software, automobile designs,...