In the advisory, “AIA Post-Grant Proceedings: Multiple Petitioners Filing A Single Petition Must Present Their Case With A ‘Single Voice',” we discussed the Patent Trial and Appeal Board’s (Board’s) position that multiple petitioners in a single proceeding constitute a single “Petitioner” and must “speak with a single voice, both in writing and oral representation.”  We offered that a potential petitioner who believes it may have substantive disagreements with a co-petitioner should consider filing its own petition, with or without a motion for joinder, in order to better defend its interests.  Now, a second decision from the Board underscores the importance of this consideration.

In Fandango, et al. v. Ameranth, Inc., CBM2014-00013, Apple, Inc. (Apple) sought a redo of its decision to co-file a single petition with four other parties.  Paper No. 22.  Similar to the members of Petitioner in Agilysys, Inc., et al., v. Ameranth, Inc., CBM2014-00014, the five members of Petitioner in Fandango proposed that each member be allowed to argue or present its own position, to the extent that the position differed from the positions of the other members.  Paper No. 14.  The Board determined the process proposed by the Petitioner was unacceptable, and that the constituent members of Petitioner must present a unified case.  Id.  

As Apple did not want to be bound to the arguments of its co-members, Petitioner filed a Motion to Reconstitute Petitioner to exclude Apple, Inc.  Paper No. 18.  The Motion contended that had Apple known that all constituent members of Petitioner would have to speak with one voice, it would have proceeded differently.  Paper No. 19, at 4-5.  Accordingly, Apple sought permission to be removed from the pending proceeding.  Id. at 1.  Apple also asked for authorization to file its own separate petition, and to seek joinder of that new proceeding with CBM2014-00013.  Id.  

The Board denied Petitioner’s request, as Petitioner had failed to meet its burden of showing it was entitled to reconstitute itself to exclude Apple.  The Board noted that 37 C.F.R. § 42.2 defines “Petitioner” as “the party filing a petition requesting that a trial be instituted.”  Paper No. 22, at 9.  As only a single petition was filed, there is only one party on the side of “Petitioner,” regardless of how many companies joined in the filing of that petition.  Id.  As such, it is not reasonable for any member of a petitioner to expect to have the opportunity to advance its own positions.  Id. at 10.  But what is interesting is that for all the effort of filing the Motion, the members of Petitioner did not expect to have differing opinions.  In fact, it was expected that Apple’s position would be in alignment with the other four constituent members.  Id.  Because of any issue that may arise was purely speculative, the Board determined any action it would take in response would be premature. 

Returning to heart of the issue, the Board emphasized that once a petitioner chose to file a joint petition, the petitioner was bound to present a unified case with its co-petitioners.  The Board stated that “if Apple made a mistake when choosing to position itself as a joint-filer of a single petition, it is fairer and more equitable for Apple to bear the consequences of its own mistake, than for the Patent Owner to bear additional burdens and costs by, effectively, allowing Apple to go back in time and un-do that mistake, after benefiting from the information in Patent Owner’s preliminary response.” Id. at 11.  The Board further suggested that Apple’s only recourse was to request for adverse judgment or settle with the Patent Owner, both highly undesirable options.  Id

This decision from the Board emphasizes once again that the procedural route a petitioner uses to enter into the proceeding can dictate its ability to present its own positions.  We repeat that if a potential petitioner believes it may have substantive disagreements with a co-petitioner, the potential petitioner should consider whether filing its interests would be better served by filing its own petition, with or without a motion for joinder.