{"id":1476,"date":"2014-09-25T21:59:37","date_gmt":"2014-09-26T01:59:37","guid":{"rendered":"https:\/\/aia.harnessip.com\/?p=1476"},"modified":"2014-10-05T14:14:03","modified_gmt":"2014-10-05T18:14:03","slug":"make-that-first-bite-a-big-one","status":"publish","type":"post","link":"https:\/\/aia.harnessip.com\/?p=1476","title":{"rendered":"Make That First Bite A Big One — Don’t Count on a Second Petition"},"content":{"rendered":"

In Medtronic, Inc. v.\u00a0 Marital Deduction Trust<\/em>, IPR2014-00695, Paper 18 (September 25, 2014), the Board denied Medtronic’s motion to join the IPR with a prior IPR 2014-00100, also involving U.S. Patent No. 5,593,417.\u00a0 The Board noted that joinder was essential because this second IPR was filed more than one year after Medtronic had been served with a complaint for infringement of the ‘417 patent.<\/p>\n

The Board said it was\u00a0not persuaded that Medtronic had\u00a0shown that joinder is justified in this instance. The Board said that the second petition represents a “second bite at the apple” for Medtronic, who had\u00a0received the benefit of seeing the\u00a0Decision to Institute in the prior case involving the same parties and patent claims.\u00a0 The Board said that this “second bite at the apple” situation is particularly noteworthy in view of the \u00a7 315(b) bar at issue here, as well as a difference of opinion that currently exists at the Board as to whether the Board has discretion under 35 U.S.C. \u00a7 315(c) to allow joinder of a person to an ongoing inter partes review when that person is already a party to the ongoing inter partes review.<\/p>\n

The\u00a0“controversy” to which the\u00a0Board referred, it cited its decision in\u00a0Target Corp. v. Destination Maternity Corp.,\u00a0IPR2014-00508, (September 25, 2014) (Paper 18), where a panel construed the statute as permitting joinder of parties, not joinder of two proceedings by the same party, while in\u00a0Ariosa Diagnostics v. Isis Innovation Ltd.,\u00a0IPR2012-00022, (September 2, 2014) (Paper 166),\u00a0a panel concluded that joinder of proceedings by the same party was appropriate.<\/p>\n

The Board noted that\u00a0to the extent that Medtronic was in a difficult position,\u00a0it was of its own making, since it delayed filing the second\u00a0petition.<\/p>\n

 <\/p>\n

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 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Medtronic, Inc. v.\u00a0 Marital Deduction Trust, IPR2014-00695, Paper 18 (September 25, 2014), the Board denied Medtronic’s motion to join the IPR with a prior IPR 2014-00100, also involving U.S. Patent No. 5,593,417.\u00a0 The Board noted that joinder was essential … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_jetpack_newsletter_access":"","_jetpack_dont_email_post_to_subs":false,"_jetpack_newsletter_tier_id":0,"_jetpack_memberships_contains_paywalled_content":false,"_jetpack_feature_clip_id":0,"_jetpack_memberships_contains_paid_content":false,"footnotes":"","jetpack_publicize_message":"","jetpack_publicize_feature_enabled":true,"jetpack_social_post_already_shared":false,"jetpack_social_options":{"image_generator_settings":{"template":"highway","default_image_id":0,"font":"","enabled":false},"version":2},"jetpack_post_was_ever_published":false},"categories":[4],"tags":[27],"class_list":["post-1476","post","type-post","status-publish","format-standard","hentry","category-ipr","tag-joinder"],"jetpack_publicize_connections":[],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"jetpack_shortlink":"https:\/\/wp.me\/p4ZIpB-nO","_links":{"self":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1476","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1476"}],"version-history":[{"count":3,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1476\/revisions"}],"predecessor-version":[{"id":1536,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1476\/revisions\/1536"}],"wp:attachment":[{"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1476"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1476"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/aia.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1476"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}