Joinder in Inter Partes Review Proceedings Takes Shape

iStock_000026550425SmallTo date, three distinct scenarios relating to joinder have been presented to the Board, each demonstrating inter partes review strategies being employed by Petitioners, as well as the Board’s willingness to join proceedings to ensure the just, inexpensive, and speedy resolution of IPR.

Before digging into those scenarios, however, we first note the statutory and regulatory underpinnings of joinder.  While the first sentence of § 315(b) sets forth the well-known 1 year bar date by which a Petitioner must bring a petition seeking inter partes review after being served with a patent infringement complaint, the second sentence of this section makes clear that the 1 year deadline does not apply when joinder is sought.  37 CFR § 42.122(b) further defines this point, requiring that any request for joinder must be brought “no later than one month after the institution date of any inter partes review for which joinder is requested.”

35 USC § 315(b) – Patent Owner’s Action. — An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.  The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).

37 CFR § 42.122(b) – Request for Joinder. Joinder may be requested by a patent owner or petitioner.  Any request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.  The time period set forth in § 42.101(b) shall not apply when the petition is accompanied by a request for joinder.

SCENARIO 1:

The first scenario presented to the Board relating to joinder involves the case of a petitioner who brings a second petition against the same patent, asserting new grounds of challenge against claims set forth in the first petition, as well as additional claims from the patent.  Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109 (Paper 15).  In this situation, the Board relied on the authority granted in § 315(b) and § 42.122(b) to join the proceedings, even though the second petition was brought outside the one year critical date.  Factors cited by the Board include that the same patents and parties were involved; there was an overlap in the prior art; there was no discernible prejudice to either party; and petitioner was diligent in filing the motion.

SCENARIO 2:

The second type of situation in which joinder has been requested in IPR proceedings is a second petition filed by a third party after the 1 year critical date of § 315(b), but within 30 days of a decision to institute, along with a motion to join under § 315(c).  This situation arose in the cases of Kyocera Corp. v. Softview, LLC IPR2013-00004 (Paper 15) and Dell, Inc. v. Network-1 Security Solutions, Inc. IPR2013-00385 (Paper 17).  In both proceedings, the Board granted the motion to join, but instituted procedural safeguards to ensure the proceeding did not become too cumbersome.  To that end, the Board required consolidated filings wherein the second petitioner would only be allowed 7 pages of additional briefing if it disagreed with first petitioner.  Relatedly, Patent Owner was granted 7 pages to respond to any such additional briefing. Also, the first petitioner was permitted to ask questions at deposition before second petitioner, and first petitioner was permitted to present argument at oral hearing before second petitioner.  The parties were instructed by the Board to work together to allocate the time normally allotted to a petitioner.

SCENARIO 3:

The last scenario that has been presented to the Board is one step further from Scenario 2.  In Sony Corp. of Am. v. Network-1 Security Solutions, Inc. IPR2013-00495, Paper 13, the Board considered a request for joinder brought by Sony and Hewlett-Packard against the same patent referenced above in the Dell proceeding.  In this case, Sony and HP brought their petition within 30 days of the second Dell petition being joined to the original proceeding, but outside the 1 year critical date and outside the 30 day window, of § 42.122, after the original decision to institute.  While the Board concluded that Sony and HP fell outside the scope of § 42.122, they still granted the motion to join, using its broad power to administer IPR proceedings under § 42.5.  This decision is understandable given the unique arrangement under which Sony and HP were willing to operate.  More specifically, the grounds asserted were identical to the earlier petitions (indeed, they were identical), and Sony and HP were willing to take virtually no role in the proceeding – no briefing, no questioning at depositions, no role at oral hearing – unless one of the earlier petitioners settled the case.

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In general, the joinder provisions, and the cases that have flowed from them, demonstrate the Board’s goal of providing for just, speedy, and inexpensive proceedings. The Board has bent over backwards to allow joinder – especially in cases in which the later-filed petition is identical to the first-filed petition.  Relatedly, it is clear to see the strategies of defendants in multi-defendant litigation.  Where a first defendant files a petition within the one year critical period from service of a district court complaint, second and subsequent defendants can sit back and see if the petition is ultimately granted.  If it is, they can easily join the proceeding, via the joinder provisions, and ensure they have a seat at the table in case Patent Owner decides to settle with the first petitioner (an occurrence that could otherwise shut other defendants out of the IPR process).

First Settlements Spawned in Inter Partes Review Proceedings

One of the unique characteristics built into inter partes review, as compared to reexamination practice, is the ability to terminate the proceeding when settlement is reached.  See, e.g., 35 USC §317.  In two, unrelated inter partes review proceedings pending before the Board, we have been provided with the first two settlements to take advantage of this new feature – terminating the inter partes reviews at an early stage.

[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]35 USC §317(a) – “IN GENERAL.–An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that inter partes review. If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).”[/pullquote]

First, in International Business Machines Corp. v. Financial Sys. Tech. (IPR2013-00078), prior to the Board even ruling on the petition seeking inter partes review, the parties approached the Board to inform that a settlement had been reached.  Following a related conference call, the Board issued a helpful Order explaining the procedure for terminating an inter partes review proceeding.  Specifically, the Board instructed that the rule governing settlement (37 CFR §42.74) requires the settlement to be in writing and filed with the Board.  The Board further provided guidance on how such a settlement agreement can be filed as confidential business information – separate from the files of the involved patent.  Lastly, the Board required the parties to file a joint motion to terminate, briefly explaining why termination is appropriate in this case.  The parties quickly filed the required joint motion and we await the Board’s dismissal of the inter partes review.  Unfortunately, there is little publicly-available information to help discern why the underlying litigation was settled, taking down the IPR proceeding with it.  No stay had been instituted, and IBM had just filed its opening claim construction brief.  Indeed, that the Board had not even decided whether to institute the trial makes it difficult to draw many conclusions from this settlement.

The second IPR settlement has transpired in Macauto USA v. BOS GmbH & Co. (IPR2012-00004), after the Board had decided to institute the IPR with regard to some claims, but not others (see related post HERE).  By way of a joint motion to terminate the IPR, the parties filed their settlement agreement and a Joint Stipulation of Voluntary Dismissal with Prejudice from the co-pending federal court litigation.  Not surprisingly, the parties also requested that the settlement agreement be treated as confidential and made available only to federal agencies upon written request, or on a showing of good cause, per 35 USC §317(b) and 37 CFR §42.74(c).  Again, there is little in the public record that would indicate the reasons why settlement was reached, including, for example, whether BOS was concerned about the prior art issues raised in the IPR; or that Macauto was concerned, from an infringement perspective, about the claims that were not made part of the IPR.

Although it is hard to draw conclusions as to why these parties settled, what seems clear is that IPR is encouraging settlement and the fact that parties can terminate the IPR proceeding with such a settlement is at least somewhat attractive to IPR participants.