Takeaway: When a complaint alleging infringement of a patent alleges infringement of “one or more claims” or “at least claim X” of the patent, the defendant is on notice concerning potential infringement of any claims of the patent, and later identification of specific claims via infringement contentions does not extend the time period in which a petition for IPR may be filed. In addition, if a new petition is filed and joinder is sought with an earlier petition, the petitioner should file its petition and motion promptly and also should explain why the claims were not addressed in the earlier petition. 

In its Decision, the Board denied Petitioner’s Motion for Joinder and denied its Petition to institute inter partes review of claims 1, 23, 24, 26, 31, 47, and 51 of U.S. Patent No. 6,404,953. The ’953 patent generally relates to “an apparatus for optical noise reduction in optical assemblies by controlling or limiting undesirable photon entrance, reflection, departure, or appearance in or from the assembly.”

The Board first considered Petitioner’s Motion for Joinder. Joinder of IPR proceedings is governed by 35 U.S.C. § 315(c), which reads as follows:

(c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.

The one-year bar provided by Section 315(b) does not apply to a request for joinder; therefore, a petitioner may request joinder even if it was served with a complaint alleging infringement of the patent more than one year before filing the Motion and Petition.

The decision to grant joinder is discretionary, and the Board determines whether to grant joinder on a case-by-case basis, considering factors such as “the breadth or unusualness of the claim scope, claim construction issues, and consent of the patent owner.” Petitioner has the burden of proof because it is the moving party.

Here, Petitioner argued that its Motion for Joinder with the ’815 IPR should be granted because (1) the Motion and Petition were timely submitted, (2) “other panels have permitted joinder of additional grounds by the same party”; (3) “joining the cases will not bring any prejudice to the Patent Owner”; (4) “the new prior art relied upon is used to address claim limitations not present in the First Petition”; and (5) “the trial schedule of the First Petition will be minimally impacted by joinder.” Patent Owner opposed the motion, arguing that “the Petition introduces a number of new issues with respect to seven additional claims, new prior art references, and newly proposed combinations, which were not previously considered by the Board” and that “an improper circumstance for joinder resulted from Petitioner’s delay in filing the instant petition [because it waited approximately six months after new claims were “expressly made part of” the related litigation before filing its petition] . . . and the Board should not award that delay.” Petitioner replied that it was not unreasonable to wait to file the second petition until it knew whether IPR would be instituted based on the first petition and that the Board had previously rejected a similar argument by a patent owner in a different case, citing Amneal Pharms. LLC v. Endo Pharms., Inc., Case IPR2014-01365 (PTAB Feb. 4, 2015) (Paper 13).

The Board discussed the circumstances of the Amneal IPR, noting that in that case the petitioner was alleged to infringe additional claims for the first time in a separate district court case filed after the bar date. In this case, however, the original complaint of the district court action alleged infringement of “one or more claims of the ’953 patent, not just claim 30.” In addition, Patent Owner did not serve an amended complaint but instead served “amended infringement contentions.”

In view of the circumstances of this case, the Board was not persuaded that Petitioner sufficiently established that joinder was warranted. First, Petitioner did not “provide any basis for why it could not have challenged the additional claims in the First Petition” after the complaint was filed and it was “on notice of infringement for any of the 51 claims in the ’953 patent.” Second, the Board determined that “Petitioner delayed in filing the Second Petition” because it waited until the very last possible day to file the Second Petition (one month after the institution of the related IPR) even though it received the amended infringement contentions more than 5 months earlier. The Board was not persuaded by Petitioner’s argument that it “makes ‘little sense to require that a petitioner file a time-barred petition and motion for joinder before a predicate trial has been instituted,’” noting that the rules do not prohibit filing a second petition until after institution of the first proceeding. The Board also concluded that the schedule in the ’815 IPR would be significantly impacted by joinder, which “would be contrary to [its] policy of securing ‘the just, speedy, and inexpensive resolution of every proceeding.’” Finally, the Board also concluded that joinder “would require the considerations of new grounds and new prior art asserted against the additional claims.” The Board therefore exercised its discretion to deny the Motion for Joinder.

Finally, having denied the Motion for Joinder, the Board also denied the Petition “because it was not filed within the time limits imposed under 35 U.S.C. § 315(b).”

Arris Group, Inc. v. Cirrex Systems, LLC, IPR2015-00530

Paper 12: Decision Denying Petitioner’s Motion for Joinder and Denying Institution of Inter Partes Review

Dated: July 27, 2015

Patent: 6,404,953 B1

Before: Meredith C. Petravick, Trenton A.Ward, and Brian P. Murphy

Written by: Ward

Related Proceedings: Cirrex System LLC v. Verizon Communications Inc., Case No. 13-cv-921-GMS (D. Del.); Arris Group, Inc. v.Cirrex Sys. LLC, Case IPR2014-00815