Trials@uspto.gov
`571-272-7822
`
`Paper 30
`Date: February 12, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner,
`
`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner.
`
`
`
`Case IPR2014-00509
`Patent RE43,531 E
`
`
`
`Before MICHAEL P. TIERNEY, LORA M. GREEN, JONI Y. CHANG,
`THOMAS L. GIANNETTI, JENNIFER S. BISK,
`MICHAEL J. FITZPATRICK, and MITCHELL G. WEATHERLY,
`Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge GREEN.
`
`Opinion Dissenting filed by Administrative Patent Judge
`MICHAEL J. FITZPATRICK, in which Administrative Patent Judges,
`JENNIFER S. BISK and MITCHELL G. WEATHERLY, join.
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`571-272-7822
`
`Paper 30
`Date: February 12, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner,
`
`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner.
`
`
`
`Case IPR2014-00509
`Patent RE43,531 E
`
`
`
`Before MICHAEL P. TIERNEY, LORA M. GREEN, JONI Y. CHANG,
`THOMAS L. GIANNETTI, JENNIFER S. BISK,
`MICHAEL J. FITZPATRICK, and MITCHELL G. WEATHERLY,
`Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge GREEN.
`
`Opinion Dissenting filed by Administrative Patent Judge
`MICHAEL J. FITZPATRICK, in which Administrative Patent Judges,
`JENNIFER S. BISK and MITCHELL G. WEATHERLY, join.
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2014-00509
`Patent RE43,531 E
`
`
`I.
`
`INTRODUCTION
`
`
`
`
`Petitioner, Target Corporation, requests joinder of the instant
`
`proceeding with IPR2013-00533. Paper 3. Patent Owner opposes. Paper
`
`17. The present Motion was filed concurrently with Petitioner’s Second
`
`Petition for inter partes review (Paper 1) involving the same patent and
`
`parties as IPR2013-00533. In a separate decision, we grant Petitioner’s
`
`Request for Rehearing. We also grant, in a separate decision entered today,
`
`Petitioner’s Motion to Limit its Petition and institute an inter partes review
`
`as to challenged claims 18 and 19. For the reasons that follow, we grant also
`
`Petitioner’s Motion for Joinder.
`
`II.
`
`BACKGROUND
`
`
`
`Petitioner presents a Statement of Material Facts in support of its
`
`motion. Paper 3, 1–7. In particular, Petitioner argues that Patent Owner
`
`learned of Japanese Utility Model Patent No. 3086624 to Asada (“Asada”)
`
`on or before June 26, 2012, when it received a copy of Asada from the
`
`Japanese Patent Office. Id. ¶ 5(b). Petitioner asserts that although it had
`
`requested that Patent Owner identify and/or produce prior art to the ’531
`
`patent in the co-pending litigation in March 2013, Patent Owner did not
`
`identify Asada until October 2013, after Petitioner had filed its request for
`
`inter partes review of the ’563 patent on August 27, 2013. Id. ¶¶ 2, 5.
`
`Petitioner’s Motion for Joinder was filed concurrently with the second
`
`Petition, and was filed within one month after institution of the trial in
`
`IPR2013-00533 and is, therefore, timely under 37 C.F.R. § 42.122(b).
`
`Moreover, IPR2013-00533 and this proceeding involve the same parties and
`
`1
`
`
`
`IPR2014-00509
`Patent RE43,531 E
`
`
`
`
`
`the same patent. The Petition filed in the instant proceeding challenges
`
`claims that are dependent on claims challenged in IPR2013-00533.
`
`III. ANALYSIS
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`
`284 (2011) (“AIA”) permits joinder of like review proceedings. Thus, an
`
`inter partes review may be joined with another inter partes review, and a
`
`post-grant review may be joined with another post-grant 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 is apparent from the statute, a request for joinder affects certain
`
`deadlines under the AIA. Normally, a petition for inter partes review filed
`
`more than one year after the petitioner (or the petitioner’s real party-in
`
`interest or privy) is served with a complaint alleging infringement of the
`
`patent is barred. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The one-year
`
`time bar, however, does not apply to a request for joinder. 35 U.S.C.
`
`§ 315(b)(final sentence); 37 C.F.R. § 42.122(b). Moreover, in the case of
`
`joinder, the one-year time requirement for issuing a final determination in an
`
`inter partes review may be adjusted. 35 U.S.C. § 316(a)(11).
`
`Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When
`
`2
`
`
`
`IPR2014-00509
`Patent RE43,531 E
`
`
`
`
`
`exercising that discretion, the Board is mindful that patent trial regulations,
`
`including the rules for joinder, must be construed to secure the just, speedy,
`
`and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).1 As
`
`indicated in the legislative history, the Board will determine whether to grant
`
`joinder on a case-by-case basis taking into account the particular facts of
`
`each case. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement
`
`of Sen. Kyl)(When determining whether and when to allow joinder, the
`
`Office may consider factors including the breadth or unusualness of the
`
`claim scope, claim construction issues, and consent of the patent owner).
`
`
`
`Patent Owner argues that joinder is not appropriate, as the Petition
`
`presents new patentability analysis and substantive arguments beyond those
`
`on which trial was instituted in IPR2013-00533. Paper 17, 5–6. Petitioner,
`
`however, moved to limit the Petition to claims 1, 18, and 19. Paper 7, 1–2.
`
`Moreover, in the Decision to Institute, we institute only on two grounds:
`
`Claim 19 as anticipated by Asada; and claim 18 as obvious over Asada and
`
`Summers. Thus, the grounds on which trial is instituted in this proceeding
`
`are limited, and do not go substantially beyond those on which trial was
`
`instituted in IPR2013-00533.
`
`
`
`Patent Owner contends further that Petitioner did not propose a
`
`modified schedule, nor did it explain how the schedule could be reconciled
`
`with the schedule in IPR2013-00533. Paper 17, 6–8. We acknowledge that,
`
`
`
`1 35 U.S.C. § 316(b) (“In prescribing regulations under this section, the
`Director shall consider the effect of any such regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings instituted under this
`chapter.”)
`
`3
`
`
`
`IPR2014-00509
`Patent RE43,531 E
`
`
`
`
`
`at this point, there is no way to reconcile the schedule in the instant
`
`proceeding with that in IPR2013-00533 given that oral hearing has already
`
`been held in IPR2013-00533, however, many of the procedural delays in this
`
`case were beyond Petitioner’s control. And as noted above, Petitioner did
`
`timely file its Motion for Joinder.
`
`
`
`Patent Owner argues also that Petitioner has not established that
`
`joinder would promote efficient resolution of the unpatentability issues, as
`
`the Petition re-challenges 15 instituted claims. Id. at 8. As acknowledged
`
`by Patent Owner, however, trial was not instituted as to claims 18 and 19 in
`
`IPR2013-00533 (id.), and we only institute trial in the instant proceeding as
`
`to claims 18 and 19.
`
`
`
`IV. CONCLUSION
`
`The policy basis for construing our rules for these proceedings is set
`
`forth in the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758
`
`(Aug. 14, 2012): “The rules are to be construed so as to ensure the just,
`
`speedy, and inexpensive resolution of a proceeding . . . .” See also Rule 1(b)
`
`(37 CFR § 42.1(b)). We have determined that this policy would best be
`
`served by granting Petitioner’s Motion. The same patent and parties are
`
`involved in both proceedings. Petitioner has been diligent and timely in
`
`filing the Motion. And while some adjustments to the schedule will be
`
`necessary, many of those adjustments were due to the procedural history of
`
`this proceeding, and beyond Petitioner’s control. In sum, the relevant
`
`factors of which we are aware all weigh in favor of granting this Motion.
`
`Given that oral hearing has already been held in IPR2013-00533, that
`
`we only institute trial as to claims 18 and 19, and that trial is being instituted
`
`4
`
`
`
`IPR2014-00509
`Patent RE43,531 E
`
`
`
`
`
`only as to two grounds, we are not issuing a scheduling order as to the joined
`
`proceeding. Rather, a conference call will be held on March 2, 2015, at 1:00
`
`pm, ET. We expect the parties to meet and confer as to an expedited
`
`schedule, as well as to whether an oral hearing will be requested. Note that
`
`all remaining filings in the joined proceeding will be limited to the grounds
`
`on which trial was instituted in IPR2014-00509.
`
`
`
`V. ORDER
`
`In view of the foregoing, it is, therefore,
`
`ORDERED that Petitioner’s Motion for Joinder is granted;
`
`FURTHER ORDERED that this proceeding is joined with IPR2013-
`
`00533;
`
`FURTHER ORDERED that that IPR2014-00509 is instituted, joined,
`
`and terminated under 37 C.F.R. § 42.72 and all further filings should be
`
`made in Case IPR2013-00533;
`
`FURTHER ORDERED that the case caption in IPR2013-00533 shall
`
`be changed to reflect the joinder with this proceeding in accordance with the
`
`attached example;
`
`FURTHER ORDERED that a conference call will be held on
`
`March 2, 2015, at 1:00 pm, ET, to discuss an expedited schedule for the
`
`joined proceeding;
`
`FURTHER ORDERED that all remaining filings in the joined
`
`proceeding will be limited to the grounds on which trial was instituted in
`
`IPR2014-00509; and
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the file of Case IPR2013-00533.
`
`5
`
`
`
`IPR2014-00509
`Patent RE43,531 E
`
`
`
`
`
`Opinion Dissenting filed by Administrative Patent Judge FITZPATRICK, in
`which BISK and WEATHERLY, Administrative Patent Judges, join.
`
`
`We dissent from the majority’s decision to join multiple proceedings
`
`under 35 U.S.C. § 315(c). Section 315(c) does not authorize joinder of
`
`proceedings. Id.; see also IPR2014-00508, Paper 28 (opinion dissenting).
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00509
`Patent RE43,531 E
`
`
`
`
`For PETITIONER:
`
`Trevor Carter
`Daniel Lechleiter
`FAEGRE BAKER DANIELS LLP
`trevor.carter@faegrebd.com
`daniel.lechleiter.ptab@faegrebd.com
`
`For PATENT OWNER:
`
`Paul Taufer
`Michael Burns
`Stuart Pollack
`DLA Piper LLP (US)
`paul.taufer@dlapiper.com
`Michael.Burns@dlapiper.com
`stuart.pollack@dlapiper.com
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner,
`
`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner.
`
`
`
`Case IPR2013-005331
`Patent RE43,531 E
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2014-00509 has been joined with this proceeding.
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