Trials@uspto.gov
`571-272-7822
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` Paper 9
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` Entered: April 28, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2014-00150
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Joint Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`571-272-7822
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`
`
`
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`
`
`
` Paper 9
`
`
`
` Entered: April 28, 2014
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2014-00150
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`DECISION
`Joint Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`Case IPR2014-00150
`Patent No. 7,518,879
`
`Introduction
`
`The parties, PNY Technologies, Inc. (Petitioner, “PNY”) and Phison
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`Electronics Corp. (Patent Owner, “Phison”), filed a joint motion for joinder
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`with Case IPR2013-00472 (Paper 7, “Mot.”) on March 19, 2014. For the
`
`reasons that follow, the joint motion for joinder is granted.1
`
`
`
`
`
`Analysis
`
`The America Invents Act (AIA) created new administrative trial
`
`proceedings, including inter partes review, as an efficient, streamlined, and
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`cost-effective alternative to district court litigation. The AIA permits the
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`joinder of like proceedings. The Board, acting on behalf of the Director, has
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`the discretion to join an inter partes review with another inter partes review.
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`35 U.S.C. § 315. Section 315(c) provides (emphasis added):
`
`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.
`
`The AIA also establishes a one-year bar from the date of service of a
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`complaint alleging infringement for requesting inter partes review, but
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`specifies that the bar does not apply to a request for joinder under Section
`
`315(c). Section 315(b) reads (emphasis added):
`
`
`
`1 In a decision entered concurrently, PNY’s Petition is granted and a trial is
`instituted on the different grounds than in Case IPR2013-00472.
`
`2
`
`
`
`Case IPR2014-00150
`Patent No. 7,518,879
`
`PATENT OWNER’S ACTION. – An inter partes review may
`not be instituted if the petition requesting the proceeding is filed
`more than 1 year after the date on which the petitioner, real
`party in interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent. The time
`limitation set forth in the preceding sentence shall not apply to
`a request for joinder under subsection (c).
`
`Thus, the Board has the discretion to adjust the time period for issuing a
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`final determination in an inter partes review. 35 U.S.C. § 316(a)(11); 37
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`C.F.R. § 42.100(c).
`
`Joinder may be authorized when warranted, but the decision to grant
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`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board
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`will determine whether to grant joinder on a case-by-case basis, taking into
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`account the particular facts of each case, substantive and procedural issues,
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`and other considerations. See 157 CONG. REC. S1376 (daily ed. Mar. 8,
`
`2011) (statement of Sen. Kyl) (when determining whether and when to allow
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`joinder, the Office may consider factors including “the breadth or
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`unusualness of the claim scope” and claim construction issues). When
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`exercising its discretion, the Board is mindful that patent trial regulations,
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`including the rules for joinder, must be construed to secure the just, speedy,
`
`and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
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`37 C.F.R. § 42.1(b).
`
`As a joint motion, the parties have the burden of proof in establishing
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`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
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`motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial
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`3
`
`
`
`Case IPR2014-00150
`Patent No. 7,518,879
`
`schedule for the existing review; and (4) address specifically how briefing
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`and discovery may be simplified. See Mot. 1; see also IPR2013-00004,
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`Paper 15 at 4; Frequently Asked Question (“FAQ”) H5 on the Board’s
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`website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
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`As provided in the joint motion, the parties argue that:
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`By allowing common issues across both proceedings to be
`briefed and considered together, both proceedings can be
`resolved efficiently and quickly, while providing significant
`cost and time savings to the Parties and the Board by avoiding
`the need to revisit the same issues multiple times in separate
`proceedings. Further, the Patent Owner has indicated their
`intent to rely on the same expert in both proceedings.
`Accordingly, granting joinder will allow significant time and
`cost savings during discovery through consolidation of the
`expert depositions.
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`Mot. 2. We agree that these are benefits to joinder that make it appropriate
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`and address how briefing and discovery may be simplified. We also
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`acknowledge that the parties provided a proposed schedule, but indicated
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`that it was contingent upon the Board ruling on the Motion by April 7, 2014.
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`As that deadline has passed, we have provided a Revised Scheduling Order
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`that provides additional time to the parties, and still allows for the joined
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`proceeding to issue a final written decision within a year of the institution of
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`the proceeding in Case IPR2013-00472, or in keeping with 35 U.S.C. §
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`316(a)(11). Based on the above factors, we find joinder to be appropriate
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`and grant the joint motion.
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`
`
`
`
`
`
`4
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`
`
`Case IPR2014-00150
`Patent No. 7,518,879
`
`Order
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`In consideration of the foregoing, it is hereby:
`
`ORDERED that the joint motion for joinder with Case IPR2013-
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`00472 is granted;
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`FURTHER ORDERED that this proceeding is joined with Case
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`IPR2013-00472;
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`FURTHER ORDERED that the grounds on which a trial was
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`instituted in Case IPR2013-00472 are altered based on the new grounds of
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`unpatentability discussed in the Decision on Institution (IPR2014-00150,
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`Paper 8) and the ground of unpatentability removed in the Decision on
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`Request for Rehearing (IPR2013-00472, Paper 16);
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`FURTHER ORDERED that the Revised Scheduling Order entered in
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`Case IPR2013-00472 (Paper 19) shall govern the schedule of the joined
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`proceedings;
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`FURTHER ORDERED that Case IPR2014-00150 is instituted, joined,
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`and terminated under 37 C.F.R. § 42.72 and all further filings in the joined
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`proceedings shall be made in Case IPR2013-00472;
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`FURTHER ORDERED that the case caption in Case IPR2013-00472
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`shall be changed to reflect the joinder with this proceeding in accordance
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`with the attached example; and
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`FURTHER ORDERED that a copy of this Decision be entered into
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`the file of Case IPR2013-00472.
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`
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`
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`5
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`
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`6
`
`Case IPR2014-00150
`Patent No. 7,518,879
`
`
`
`For PETITIONER:
`
`Mark E. Nikolsky
`Sanjiv M. Chokshi
`McCARTER & ENGLISH LLP
`mnikolsky@mccarter.com
`schokshi@mccarter.com
`
`
`
`For PATENT OWNER:
`
`Joshua A. Griswold
`David M. Hoffman
`FISH & RICHARDSON P.C.
`griswold@fr.com
`hoffman@fr.com
`
`
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-004722
`Patent 7,518,879
`____________
`
`
`
`
`
`
`
`2 Case IPR2014-00150 has been joined with this proceeding
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