IPR Proceedings Filed Eight Months Apart Is Too Long to Permit Joinder

September 11, 2014

In the Macronix International Co., Ltd. et al. v. Spansion LLC, the PTAB denied Petitioner's motion for joinder under Section 315(c). On November 8, 2013, the Petitioner filed a petition for inter partes review of U.S. Patent No. 7,151,027 ("the '027 patent"), which was later granted on May 8, 2014. Subsequently, on June 4, 2014, the Petitioner filed a second petition for inter partes review of the '027 patent. At that time, the Petitioner also moved to join the two IPR proceedings and proposed a revised schedule in the event its motion for joinder was granted.

The Board explained the factors establishing entitlement to joinder:

As the moving party, Petitioner has the burden of proof in establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). 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 Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15, 4 (Apr. 24, 2013).

In support of its motion, the Petitioner argued that joining the cases would only have a minimal impact on the Patent Owner because (1) the Petitioner was relying on the same declarant in both IPRs, (2) both petitions rely on the same piece of prior art as the primary reference, (3) the prior art in the later IPR proceeding already should have been considered by the Patent Owner because the same prior art was asserted in a co-pending ITC investigation, and (4) the proposed revised schedule would add only 7 weeks to the existing schedule, resulting in moving the date for oral argument from January 13, 2015 to March 3, 2015.

The Patent Owner opposed on the grounds that the later IPR petition raises numerous substantive issues that are not present in the first proceeding and it would be prejudiced by the proposed revised schedule, stating that the date for oral argument would have to be extended at least until April 7, 2015.

Under these circumstances, the Board determined that joinder would have a "significant adverse impact on [its] ability to complete the existing proceeding in a timely manner, which weighs against granting the motion for joinder:"

The Board is charged with securing the just, speedy, and inexpensive resolution of every proceeding, and has the discretion to join or not join proceedings to ensure that objective is met. 37 C.F.R. §§ 42.1(b), 42.122. Case IPR2014-00108 was filed more than eight months ago and is already well underway, with Patent Owner having cross-examined Petitioner's Declarant and filed its response, and Petitioner's reply being due on October 6, 2014. See IPR2014-00108, Paper 17. Joinder at this stage would require a lengthy delay in the ongoing review. Further, Patent Owner objects to Petitioner's proposed revised schedule if joinder is permitted. See Paper 10. Nevertheless, while this proceeding is not being joined with Case IPR2014-00108, we will attempt to schedule both proceedings to maximize efficiencies and to complete both in a timely manner.

Because the Petitioner could not show that the issues raised in the second IPR petition could not be resolved in a joined proceeding without substantially affecting the scheduling the first IPR proceeding, the Board held that Petitioner had not satisfied its burden of proof that it was entitled to the requested relief.

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It is noteworthy that even in instances where two IPR proceedings involve the same patent and rely on the same declarant and much of the same prior art, the Board will not exercise its discretion to join the proceedings if joinder jeopardizes the Board's ability to secure the just, speedy, and inexpensive resolution of each proceeding.

Macronix International Co., Ltd. et al. v. Spansion LLC, Case IPR2014-00898, Paper 15 (Rice, A.P.J.).

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.