Trials@uspto.gov Paper No. 15
`571-272-7822 Date Entered: Aug 9, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABB INC.
`Petitioner,
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`____________
`
`Case IPR2013-00282
`Patent 6,516,236 B1
`____________
`
`
`
`
`Before, THOMAS L. GIANNETTI, BRYAN F. MOORE and, JENNIFER S.
`BISK, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`571-272-7822 Date Entered: Aug 9, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABB INC.
`Petitioner,
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`____________
`
`Case IPR2013-00282
`Patent 6,516,236 B1
`____________
`
`
`
`
`Before, THOMAS L. GIANNETTI, BRYAN F. MOORE and, JENNIFER S.
`BISK, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`Case IPR2013-00282
`Patent 6,516,236 B1
`
`
`I.
`
`INTRODUCTION
`
`
`
`ABB Inc. (ABB) filed a petition for inter partes review of U.S. Patent
`
`6,516,236 (the ’236 Patent) on May 17, 2013 (Paper 1) (the Petition). With its
`
`Petition, ABB filed a Motion for Joinder (Paper 4), seeking to join this case with
`
`ABB, Inc. v. ROY-G-BIV Corporation, IPR2013-00062, instituted on April 18,
`
`2013. In a separate decision, entered today, we grant the Petition, which has been
`
`limited mainly to references that also are being asserted in IPR2013-00062 and in
`
`another related case involving the same parties, also instituted on April 18, 2013,
`
`namely, IPR2013-00074. For the reasons that follow, we grant ABB’s Motion for
`
`Joinder.
`
`II.
`
`BACKGROUND
`
`On May 29, 2013, the Board held a teleconference concerning the Petition
`
`and the accompanying motion for joinder. On May 30, 2013, the Board issued an
`
`order authorizing ABB to file a motion limiting the Petition as discussed on the
`
`call, in order to make joinder with the IPR2013-00062 more feasible. Paper 6
`
`(May 30, 2013 Order). The Board’s May 30, 2013 Order authorized ABB to file a
`
`motion to limit the Petition to certain claims and grounds to reduce Patent Owner’s
`
`burden in responding and to facilitate joinder.
`
`In response, on June 6, 2013, ABB filed a motion to limit the Petition to the
`
`following grounds of unpatentability of the ʼ236 Patent:
`
`1. Gertz, Stewart, Morrow, DDAG, and Brockschmidt render claims 5-6
`
`obvious.
`
`2. Gertz, Stewart, Morrow, DDAG, and HP86 render claim 7 obvious.
`
`Paper 10.
`
`
`
`2
`
`
`
`Case IPR2013-00282
`Patent 6,516,236 B1
`
`
`
`On June 10, 2013, the Board granted the motion to limit the Petition as
`
`requested by ABB. Paper 11. On June 24, 2013, Patent Owner Roy-G-Biv
`
`Corporation (Roy-G-Biv) filed a waiver of the right to file both a preliminary
`
`response and an opposition to the motion for joinder. Paper 13.
`
`III. DISCUSSION
`
`The Leahy-Smith America Invents Act (AIA) permits joinder of like review
`
`proceedings. Thus, an inter partes review (IPR) may be joined with another inter
`
`partes review. The statutory provision governing joinder of inter partes review
`
`proceedings is 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.
`
`As the movant, ABB bears the burden to show that joinder is appropriate.
`
`37 C.F.R. § 42.20(c). In its Motion for Joinder, ABB notes that IPR2013-00062
`
`involves the same parties, the same patent, and much of the same prior art as this
`
`proceeding. Motion for Joinder, p. 3. As noted above, ABB has simplified this
`
`proceeding by limiting the number of challenges to two grounds. The prior art
`
`references for these grounds substantially overlap with the references at issue in
`
`IPR2013-00062. This facilitates scheduling of the joined actions and minimizes
`
`delay.
`
`In exercising its discretion to grant joinder, the Board considers the impact
`
`of both substantive issues and procedural matters on the proceedings, as well as
`
`any other appropriate considerations.
`
`
`
`3
`
`
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`Case IPR2013-00282
`Patent 6,516,236 B1
`
`
`Substantive issues in this IPR would not be unduly complicated by joining
`
`with IPR2013-00062 because the joinder introduces only two pieces of new prior
`
`art (both of which are exhibits in IPR2013-00062). Regarding procedural matters,
`
`we note that ABB and Roy-G-Biv each indicated that they were satisfied with the
`
`dates in the current Scheduling Order in IPR2013-00062 (Paper 24); however,
`
`Petitioner noted that the schedule may have to be adjusted depending on the
`
`outcome of joinder motions. The Scheduling Order in IPR2013-00062 sets the
`
`final hearing for January 23, 2014. Final hearing and final determination should
`
`not be delayed by joining the two proceedings. Another consideration is that Roy-
`
`G-Biv does not oppose the motion for joinder.
`
`IV. CONCLUSION
`
`Under the circumstances, we are persuaded that for all of the foregoing
`
`reasons granting ABB’s Motion for Joinder will not unduly complicate or delay
`
`IPR2013-00062 and therefore the motion should be granted.
`
`
`
`V. ORDER
`
`In view of the foregoing, it is therefore
`
`ORDERED that IPR2013-00282 is joined with IPR2013-00062;
`
`FURTHER ORDERED that Patent Owner is given leave to file a
`
`Supplemental Patent Owner Response of up to 10 pages. The response will be
`
`filed no later than August 30, 2013 and strictly is limited to addressing the new
`
`grounds added by joinder;
`
`FURTHER ORDERED that the Scheduling Order in place for IPR2013-
`
`00062 shall govern the joined proceedings, except that the dates identified as
`
`DATES 2-5 contained in the Scheduling Order may be modified by agreement of
`
`the parties, but no later than DUE DATE 6;
`
`4
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`
`
`
`
`Case IPR2013-00282
`Patent 6,516,236 B1
`
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`FURTHER ORDERED that DUE DATE 7 in the Scheduling Order shall
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`not be changed, and, in the event of any changes to the schedule, the parties inform
`
`the Board promptly in the form of a notice of stipulation;
`
`FURTHER ORDERED that this proceeding (IPR2013-00282) is
`
`terminated under 37 C.F.R. § 42.72 and all further filings in the joined proceeding
`
`shall be made in IPR2013-00062; and
`
`FURTHER ORDERED that the case caption in IPR2013-00062 shall be
`
`changed to reflect joinder with this proceeding in accordance with the attached
`
`example.
`
`
`PETITIONER:
`
`Richard D. McLeod
`Michael D. Jones
`Klarquist Sparkman LLP
`rick.mcleod@klarquist.com
`michael.jones@klarquist.com
`
`
`PATENT OWNER:
`
`Richard T. Black
`Joel B. Ard
`Foster Pepper PLLC
`blacr@foster.com
`ardjo@foster.com
`
`
`
`
`
`
`5
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`
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`Case IPR2013-00282
`Patent 6,516,236 B1
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABB INC.
`Petitioner,
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`____________
`
`Case IPR2013-00062
`Case IPR2013-00282
`Patent 6,516,236 B1
`
`____________
`
`
`
`6
`
`
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