In its decision on a motion for joinder, a PTAB panel granted petitioner SAP’s motion to join its inter partes review (IPR) proceeding with the already underway IPR2013-00586 (Unified IPR). Under 35 U.S.C. § 315(c), the director, in his or her discretion, may join as a party to an already initiated IPR, any person who properly filed a petition under 35 U.S.C. § 311, where that petition warrants institution of review. Here, SAP argued that joinder would promote efficiency, but not delay the pending Unified IPR. The patent owner opposed joinder, arguing that SAP had not “identif[ied] any compelling reasons why joinder is appropriate.” The Board explained that the petitioner’s reasons do not have to be “compelling.” SAP stated that it would withdraw its expert declaration and rely on the evidence already submitted in the Unified IPR. SAP also proposed that the Board order consolidated filings for which Unified would be responsible. The Board granted SAP’s motion to join because its IPR petition raised no new issues as compared to the Unified IPR petition, SAP’s proposed procedural protections allowed Unified to retain control over the joined proceeding, and SAP’s protections prevented the need to alter the scheduling order. Granting SAP’s motion to join under those circumstances would not unduly complicate or delay the Unified IPR. The Board ordered IPR2014-00306 joined with IPR2013-00586.
SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00306 (PTAB May 19, 2014) [Busch (opinion), Lee, Kalan]