In Regions Financial Corporation, v. Retirement Capital Access Management Company, LLC, CBM2014-00012, Paper 17 (March 25, 2014) the Board denied a motion to join the case with CBM2013-00014 because under the circumstances, joinder would have a significant adverse impact on the Board’s ability to complete the existing proceeding in a timely manner.  The Board noted that oral argument had already been schedule in the first CBM.

The Board outlined the showing required in a motion for Joinder

As the moving party, Petitioners have the burden of proof in establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c). 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) address specifically how briefing and discovery may be simplified. See e.g. Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013).

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In Fandango, LLC v, Ameranth, Inc., CBM2014-00013 Paper 22 (March 24, 2014), Apple learned the hardway the downside of filing a joint petitioner for covered busness method review:  The Board will only a permit single representation.  This not only restricts the choice of counsel, but it affects the choice of arguments. The joint parties cannot take different, let alone inconsistent positions, because they are one petitioner, represented by a single counsel.  While you save on filing fees, you lose on the ability to control the arguments presented.  Joint Petitioners should think carefully about marriage (and probably have a iron-clad pre-nup).

Institution Decisions

In Aker Biomarine AS v. Neptune Technologies and Bioressources Inc., IPR2014-00003, Paper 22 (March 24, 2014) the Board instituted an inter partes review of claims 1-6, 9, 12, 13, 19-29, 32, 35, 36, and 42-46 of U.S. Patent No. 8,278,351.  ALthough the petition was filed against all 94 claims in the patent, the parties stiputed to a limitation of the proceedign to the claims for which the Board instituted trial.

Termination

The Board terminated Samsung Electronics Co., Ltd.v. U.S. Ethernet Innovations, LLC, IPR2013-00384, Paper 16 (March 19, 2014), on the joint motion of the paries, the Board noting that the proceeding still was in the preliminary stages.

New Filings

Oxford Nanopore Technologies Ltd. filed IPR2014-00512 and IPR2014-00513 challenging U.S. Patent No. 6,673,559 assigned to the University of Washington.

New Filings

Stats LLC filed IPR2014-00510 challenging U.S. Patent No. 6,725,107 assigned to Hockeyline, Inc.

A.C. Dispensing Equipment Inc. filed IPR2014-00511 challenging U.S. Patent No. 8,534,497 assigned to A.C. Dispensing Equipment Inc.

Termination

The Board terminated Fifth Third Bank v. Leon Stambler, IPR2014-00244, Paper 9 (March 2014), on the joint motion of the parties.  The Board noted the proceeding was still in the preliminary stages, trial not having been initiated.

In comScore, Inc. v. Moat, Inc., IPR2013-00503, Paper 16 (March 17, 2014), the Board considered the parties motion to harmonize this inter partes review with a recently filed covered business method review, CMB2014-00071 on the same patent. The Board noted that until the coverned busiess review is granted, further action was premature, but it the Board did not object to the concept of joining an inter partes review and a covered business method review