In IPR2015-00821, Petitioner Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., sought to join its Petition with a recently initiated IPR proceeding involving the same patent, parties, and counsel. The patent at issue, U.S. Patent No. 8,532,641, is directed to a music enabled communication system. Specifically, Petitioner requested inter partes review of claims 1-3, 5-7, 9, and 10 of the '641 patent using two new references, Ushiroda and Bork, in combination with references Ito, Haartsen, Rydbeck, Nokia, and Galensky, previously relied upon in IPR2014-01181. Pet. 14-46; Motion for Joinder 2-3. The Petitioner conceded that, absent joinder, the institution of inter partes review would be barred under 35 U.S.C. § 315(b) because the petition was filed more than 1 year after the date on which it had been served with a complaint alleging infringement of the '641 patent.
As explained below, the Board exercised its discretion to deny the Petitioner's motion finding that Petitioner had not provided sufficient justification for the delay in asserting the new grounds of invalidity in the current petition. As such, the Petition was merely an attempt for the Petitioner to obtain a "second bite at the apple," which runs contrary to the Board's mandate to provide just, speedy, and an inexpensive resolution of the proceedings under 37 C.F.R. § 42.1(b).
The Petitioner contended that joinder was appropriate because its pending IPR proceedings involve the same patent, parties, and counsel, and "Patent Owner has already responded to, and the Board has already analyzed for institution, prior petitions challenging every claim now at issue in the new Petition." The Petitioner further contended that it was not aware of Ushiroda at the time the earlier petition was filed and, in combination with Bork, the two references resolve any concerns the Board had with respect to the references cited in the earlier petition.
The Patent Owner asserted that the statute does not permit the same party to join a proceeding to which it is already a party. Opp. 2-3 (citing Skyhawk Techs. LLC v. L&H Concepts, LLC, Case IPR2014-01485, slip op. at 3-4 (PTAB Mar. 21, 2015) (Paper 13)). The Patent Owner further contended that the Motion for Joinder should be denied because Petitioner was essentially seeking a "second bite at the apple," without providing any reasonable explanation as to why it did not make its arguments with respect to the Ushiroda and Bork references in an earlier, timely-filed petition.
The Board began by recognizing that there is a split in the PTAB panels on the issue of whether same party joinder is permissible. Because the Board sided with the Patent Owner and held that the Petitioner failed to provide any justification for its delay in raising these new grounds of invalidity, it did not address whether same party joinder was permissible:
In particular, Petitioner articulates no persuasive reason why, using reasonable efforts, the Ushiroda reference could not have been identified and relied upon in the earlier, timely-filed petitions. See Pet. 18-19 (noting that Ushiroda issued on April 3, 2001 as U.S. Patent No. 6,212,403); Opp. 12 (asserting that "Ushiroda is an easily located and accessible U.S. patent" and "Petitioners were clearly aware of the Bork reference . . . because they relied on Bork in other proceedings against the Patent Owner"). Thus, we do not consider this to be a case of changed circumstances--such as new claims being asserted during district court litigation or new threats of infringement--that would make joinder an equitable remedy. See, e.g., Micro Motion, Inc. v. Invensys Sys., Inc., Case IPR2014-01409, slip op. at 14 (PTAB Feb. 18, 2015) (Paper 14) (citing Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109, slip op. at 3, 5 (PTAB Feb. 25, 2014) (Paper 15)).
This appears, instead, to be a case where Petitioner seeks to use our Decision to Institute in IPR2014-01181 as a guide to remedy deficiencies in the earlier filed petition, i.e., a "second bite at the apple." See Motion for Joinder 3 (noting that the Ushiroda reference was located "only after the institution decision in IPR2014-01181"). Interpreting our rules to allow Petitioner another chance to argue the unpatentability of the challenged claims would not lead to the just, speedy, and inexpensive resolution of the proceedings. See 37 C.F.R. § 42.1(b). To the contrary, joinder of the current proceeding would require Patent Owner to address new arguments and evidence, and potentially require additional declarations and witness depositions, all under a compressed schedule made necessary to accommodate the more advanced stage of the proceeding in IPR2014-01181. Petitioner's desire to present additional grounds directed to claims already the subject of three prior inter partes review petitions, and directed to claims currently under review in IPR2014-01182, does not justify the additional burden on Patent Owner, the additional costs, or the use of judicial resources.
As a result of denying the motion to join the prior IPR proceeding, the Board held that the Petition was barred as untimely under 35 U.S.C. § 315(b).
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This decision illustrates that petitioners seeking to join a pending IPR proceeding must show that any delay in filing the later petition was warranted and not merely an attempt to address the deficiencies in earlier petitions, particularly in cases where the petitioner is attempting to join an IPR proceeding in which it is the petitioner. The Board recognized (but did not resolve) that, in fact, there is a split of PTAB authority regarding whether same party joinder is permissible under the rules. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., Case IPR2015-00821 (PTAB May 15, 2015) (Paper 10) (A.P.J. Tornquist)