For petitioners that have allowed the one-year statutory period to lapse for the filing of an IPR, if another petitioner is successful in having trial instituted in another proceeding, the petitioner that was served with a complaint more than one year earlier can file a petition with a motion for joinder. The Board has discretion to deny the motion. So, what improves a petitioner’s odds for having the motion granted? It appears that attacking the claims on the same grounds on which trial was instituted, using the same evidence, and attacking only the same claims as those at issue in the earlier proceeding may be the best approach. This may be best shown by the Dell Inc. v. Network-1 Security Solutions, Inc. IPR and theSony Corp. of America v. Network-1 Security Solutions, Inc. IPRs. In one case (Dell) joinder was permitted, in the other (Sony Corp.) joinder was denied. In the Dell case, Dell attempted to minimize the differences between the scope of trial in the earlier IPR and the IPR sought by Dell, whereas in the Sony case, Sony sought to attack a new claim, include new grounds for trial, and put forward new evidence in support of its petition. Therefore, those seeking joinder will likely want to keep the issues as narrow as possible when filing their petitions forinter partes review.
Register now for your free, tailored, daily legal newsfeed service.
Questions? Please contact email@example.comRegister
Joinder strategies for petitioners becoming more clear
Popular articles from this firm
If you would like to learn how Lexology can drive your content marketing strategy forward, please email firstname.lastname@example.org.
Related topic hubs
" The articles are of a good quality. I often print out articles or otherwise note them for bringing to the attention of my colleagues. I find Lexology a helpful and enjoyable update on current issues and would like to continue reading it."