Joinder — Split decisions on the Same Day are Revealing

Posted on by

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00858, Paper 13 (October 2, 2014), the Board granted Fujitsu’s motion to join the proceeding with prior IPR2014-00803.

The Board noted that the Leahy-Smith America Invents Act permits joinder of like review proceedings, and said that acting on behalf of the Director, it has the discretion to join an inter partes review with another inter partes review, citing. 35 U.S.C. § 315.  The Board said that joinder may be authorized when warranted, but the decision to grant joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When exercising its discretion, the Board is mindful that patent trial regulations, including the rules for joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). The Board considers the impact of both substantive issues and procedural matters on the proceedings.

The moving party bears the burden to show that joinder is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In the instant case, Fujitsu argued that joinder was appropriate because: (1) it is the most expedient way to secure the just, speedy, and inexpensive resolution of the related proceedings; (2) The petition are substantively identical; (3) Fujitsu agreed to consolidate filings and discovery; (4) joinder would not affect the schedule; (5) joinder would streamline the proceedings, reduce the costs and burdens on the parties, and increase efficiencies for the Board without any prejudice to patent owner.

In Samsung Electronics Co., Ltd. v. Arendi S.A.R.L., IPR2014-01142, Paper 11 (October 2, 2014), decided the same day the Board denied joinder which would have saved the Petition from being barred under 35 USC 315(b), noting:

  • Petitioner did not specify the differences between its petition and the prior petition.
  • Petitioner did not indicate what it meant by “substantially” identical claim charts.
  • Petitioner added testimony from a new witness, introducing arguments that are not present in the prior petition.
  • Petitioner does not suggest any specific changes to the schedule in the prior proceeding, simply alleging “there appears to be no discernable impact on the trial schedule.”
  •  Petitioner did not set forth how briefing and discovery may be simplified, other than suggesting that it have seven additional pages for papers filed.
  • Petitioner submitted no evidence that the other petitioner has agreed to, or will, “work together” with Petitioner “to manage the questioning at depositions, and presentations at the hearing, to manage within the time normally allotted, and to avoid redundancy.”

The Board concluded that in view of the facts and circumstances of this case, Petitioner, as movant, has not met its burden to show why joinder is appropriate, consistent with the goal of securing the just, speedy, and inexpensive resolution of every proceeding.

This entry was posted in Inter Partes Review by Bryan Wheelock. Bookmark the permalink.

About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.