Takeaway: Despite challenging the same claims with the same art, the Board may deny joinder of two proceedings when different expert witnesses are proffered for each proceeding because new issues may be raised with respect to the new declaration for the new witness.

In its Decision, the Board denied institution of inter partes review (IPR) of claims 1, 8-13, 15, 16, 18-21, and 23-30 of the ’212 patent. The Board also denied Petitioner’s motion for joinder with Sony Mobile Communications (USA) Inc. (“Sony”) v. Adaptix, Inc., IPR2014-01525.

Beginning with the motion for joinder, the Board noted that the decision to grant joinder is discretionary and Petitioner has the burden of showing that joinder is appropriate. Petitioner sought to join as a party to the IPR ’1525 proceeding in which the Board instituted review of claims 1, 8-13, 15, 16, 18-21, and 23-30 of the ’212 patent as being obvious over Kapoor and Ritter.

Petitioner argued that joinder should be granted as a matter of right because Petitioner is challenging the same claims on the same grounds (e.g., with the same art, Kapoor and Ritter). However, the Board noted that Petitioner has not filed an identical petition because the petition in IPR ’1525 relied on expert testimony of Robert Akl. In the instant proceeding, Petitioner relied upon the testimony of DR. Tim A. Williams.

Patent Owner argued that it should have the opportunity to cross-examine Petitioner’s witness and that the new declaration necessarily introduces a new expert declarant and potentially raises new issues. In addition, the deposition of Sony’s witness has already occurred. Patent Owner also argued that the Board cannot deny Petitioner’s motion and grant the instant Petition.

The Board agreed with Patent Owner that the new issues raised by reliance on the different declarant in the instant Petition would adversely impact the IPR ’1525 trial. Further, absent joinder, Petitioner is barred from IPR of the ’212 patent because it was served with a complaint alleging infringement of the patent on May 28, 2013, more than one year prior to the filing of the instant Petition, which occurred on May 8, 2015.

Petitioner argued that joinder should be granted because Petitioner would be forced to litigate validity in district court under the more demanding burden of clear and convincing evidence in the event that Sony settles its case. The Board determined that Petitioner had not met its burden to show why joinder is appropriate and thus denied the motion for joinder.

Given that Petitioner was served with a complaint alleging infringement more than one year prior to the date of filing the instant Petition, the Board denied institution of IPR.

ZTE CORPORATION, ZTE (USA) INC., and T-MOBILE USA INC. v. ADAPTIX INC.,IPR2015-01184

Paper 10: Decision Denying Institution of Inter Partes Review

Dated: July 24, 2015

Patents: 7,454,212

Before: Howard B. Blankenship, Trevor M. Jefferson, and Justin Busch

Written by: Blankenship

Related proceedings: Adaptix, Inc. v. AT&T, Inc., No. 6:12-cv-00017 (E.D. Tex.);Adaptix, Inc. v. Pantech Wireless, Inc., Nos. 6:12-cv-00020 and ’778 (E.D. Tex.);Adaptix, Inc. v. Cellco Partnership, No. 6:12-cv-00120 (E.D. Tex.); Adaptix, Inc. v. Blackberry Limited, Nos. 5:14-cv-01380, ’386, and ’387 (N.D. Cal.); Adaptix, Inc. v. Kyocera Corp., Nos. 3:14-cv-02894 and ’2895 (N.D. Cal.); Adaptix, Inc. v. Apple, Inc., Nos. 5:13-cv-01776, ’1777, and ’2023 (N.D. Cal.); Adaptix, Inc. v. AT&T, Inc., No. 5:13-cv-01778 (N.D. Cal.); Adaptix, Inc. v. Cellco Partnership, No. 5:13-cv-01844 (N.D. Cal.); Adaptix, Inc. v. Dell, Inc., No. 5:14-cv-01259 (N.D. Cal.); Adaptix, Inc. v.Amazon.com, Inc., No. 5:14-cv-01379 (N.D. Cal.); Adaptix, Inc. v. Sony Mobile Commc’ns, Inc., No. 5:14-cv-01385 (N.D. Cal.); Adaptix, Inc. v. ASUSTek, No. 5:14-cv-03112 (N.D. Cal.); Adaptix, Inc. v. HTC Corp., Nos. 5:14-cv-02359 and ’2360 (N.D. Cal.); and Adaptix, Inc. v. ZTE Corp., Nos. 5:15-cv-00165, ’00166, ’00167, and ’00168.