Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Entered: December 8, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MEDTRONIC, INC., MEDTRONIC VASCULAR, INC., AND
`MEDTRONIC COREVALVE, LLC,
`Petitioner,
`
`v.
`
`TROY R. NORRED, M.D.,
`Patent Owner.
`_______________
`
`
`Case IPR2014-00823
`Patent 6,482,228 B1
`_______________
`
`Before SHERIDAN K. SNEDDEN, BARRY L. GROSSMAN, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge SNEDDEN.
`
`Opinion Concurring filed by Administrative Patent Judge WEATHERLY.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`DECISION
`Denying Motion for Joinder,
`and Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`

`
`IPR2014-00823
`Patent 6,482,228 B1
`
`I. INTRODUCTION
`
`Medtronic, Inc., Medtronic Vascular, Inc., and Medtronic Corevalve,
`
`LLC (collectively “Medtronic” or “Petitioner”) filed a petition (Paper 3,
`
`“Petition” or “Pet.”) requesting an inter partes review of claims 20–24 (the
`
`“challenged claims”) of U.S. Patent 6,482,228 B1 (Ex. 1001, “the ’228
`
`patent”). See 35 U.S.C. § 311. Troy R. Norred, M.D. (“Patent Owner”) did
`
`not file a Patent Owner Preliminary Response.
`
`Concurrently with the filing of the Petition, Petitioner filed a motion
`
`for joinder pursuant to 35 U.S.C. § 315(c). Paper 2, 1 (the “Mot. for
`
`Joinder” or “Joinder Motion”). Specifically, Medtronic moves “for Joinder
`
`of the Second Petition for Inter partes Review of U.S. Patent No. 6,482,228
`
`. . ., with the instituted inter partes review, Medtronic, Inc., et al. v. Troy R.
`
`Norred, Case No. IPR2014-00111, pursuant to 35 U.S.C. § 315(c) and 37
`
`C.F.R § 42.122.” Id. Thus, Medtronic seeks to consolidate issues presented
`
`in the Petition with issues on which we have instituted review in Medtronic,
`
`Inc. v. Norred, Case IPR2014-00111 (“the ’111 IPR”). Petitioner timely
`
`filed its Joinder Motion within one month after institution of a trial in
`
`IPR2014-00111, as required by 37 C.F.R. § 42.122(b). Patent Owner filed
`
`an Opposition to Motion for Joinder (Paper 7, “Opp. to Joinder”). Petitioner
`
`filed a Reply to Opposition to Motion for Joinder (Paper 11, “Reply”). We
`
`have jurisdiction under 35 U.S.C. § 314.
`
`For the reasons provided below, we exercise our discretion under
`
`35 U.S.C. § 315(c) and deny Petitioner’s Motion to join the Petition to the
`
`’111 IPR. We also deny the Petition and do not institute an inter partes
`
`review of the ’228 patent based on the Petition.
`
`2
`
`

`
`IPR2014-00823
`Patent 6,482,228 B1
`
`II. ANALYSIS
`
`A. Law of Joinder
`
`The statutory provision governing joinder of inter partes review
`
`proceedings is § 315(c), which provides 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.
`
`Section 315(c) references § 311, which provides that “a person who is
`
`not the owner of a patent may file with the Office a petition to institute an
`
`inter partes review of the patent.” Section 315(c) refers also to § 314, which
`
`allows the Director to institute an inter partes review if there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least one of the
`
`claims challenged in the petition.
`
`The Petition was filed on May 27, 2014. Petitioner acknowledges
`
`that, more than one year before filing the Petition, it was served with a
`
`complaint alleging infringement of the ’228 patent in Norred v. Medtronic,
`
`Inc., No. 2:13-cv-02061. Pet. 1, 6. Section315(b) bars institution of inter
`
`partes review when the petition is filed more than one year after the
`
`petitioner is served with a complaint alleging infringement of the patent. 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). Thus, absent joinder of this proceeding to IPR2014-
`
`00111, the Petition is barred under § 315(b).
`
`3
`
`

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`IPR2014-00823
`Patent 6,482,228 B1
`
`The decision to grant joinder is discretionary. 35 U.S.C. § 315(c); 37
`
`C.F.R. § 42.122(b). When exercising that discretion, the Board is mindful
`
`that our rules, 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).
`
`B. Decision on Motion for Joinder
`
`Petitioner challenges claims 20–24 of the ’228 patent on the following
`
`grounds. Pet. 8–14.
`
`Reference[s]
`
`Basis
`
`Claims challenged
`
`Figulla1
`
`Figulla and Shu2
`
`
`
`§ 102(b)
`
`§ 103(a)
`
`20–24
`
`20–24
`
`Petitioner, however, is currently a party in the following instituted
`
`inter partes review proceedings involving the ’228 patent: IPR2014-00111
`
`and IPR2014-00395. These two cases are on-going and were instituted with
`
`the following grounds:
`
`Reference[s]
`
`Basis
`
`Claims challenged
`
`Case No.
`
`Schreck3
`
`§ 102(e)
`
`Schreck and Shu
`
`§ 103(a)
`
`20–24
`
`22–23
`
`IPR2014-00111
`
`IPR2014-00111
`
`
`1 Figulla, DE App. No. 195 46 692, published Jul. 6, 2000. Ex. 1003 (The
`English translation is provided as Ex. 1004).
`2 Shu, US 6,139,575, issued Apr. 2, 1999. Ex. 1005.
`3 Schreck, US 6,454,799 B1, issued Apr. 6, 2000.
`
`4
`
`

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`IPR2014-00823
`Patent 6,482,228 B1
`
`Reference[s]
`
`Basis
`
`Claims challenged
`
`Case No.
`
`Leonhardt4
`
`Bailey5
`
`
`
`§ 102(b)
`
`16 and 19–24
`
`IPR2014-00395
`
`§ 102(e)
`
`16 and 19–24
`
`IPR2014-00395
`
`The Board determines whether to grant joinder on a case-by-case
`
`basis, taking into account the particular facts of each case. Here, we
`
`determine that Petitioner’s stated reasons for allowing joinder do not
`
`outweigh meaningful reasons not to allow joinder. Petitioner sought inter
`
`partes review based on Figulla and Shu by filing a new petition, rather than
`
`seeking rehearing under 37 C.F.R. § 42.71(d)(1) of the decision in the ’111
`
`IPR not to institute review based on these two references. We, however,
`
`already have determined that Petitioner has demonstrated a reasonable
`
`likelihood that it would prevail in its challenges to claims 20–24 and we
`
`decline to consider modifying the schedule in the ’111 IPR at a late stage in
`
`that proceeding to add additional challenges based on prior art references we
`
`already have considered. Absent granting the Joinder Motion, the Petition is
`
`barred under § 315(b).
`
`Petitioner recognizes that the grounds herein essentially duplicate the
`
`grounds presented in the ’111 IPR Petition. Mot. for Joinder 4–5 (“the
`
`Board should also consider the grounds based on Figulla initially raised in
`
`the First [’111] Petition and raised again in this Second Petition”) (emphasis
`
`added). Additionally, Petitioner asserts that joinder is warranted because
`
`“Patent Owner has already considered and responded to these grounds
`
`
`4 Leonhardt, US 5,957,949, issued Sept. 38, 1999.
`5 Bailey, 6,458,153 B1, issued Oct. 1, 2002.
`
`5
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`

`
`IPR2014-00823
`Patent 6,482,228 B1
`
`[Figulla and Figulla combined with Shu] in the Patent Owner’s Response to
`
`the First Petition.” Mot. for Joinder 8. This is incorrect. Patent Owner did
`
`not respond to asserted grounds based on Figulla and Figulla combined with
`
`Shu in Patent Owner’s Response in the ’111 IPR, Paper 15. If we allowed
`
`joinder of the Petition herein with the ’111 IPR, Patent Owner would be
`
`entitled to respond to the new references and new grounds being joined.
`
`In IPR2014-00111, which Petitioner seeks to join, Patent Owner has
`
`filed a Patent Owner Response (Paper 15) and a Motion to Amend the
`
`claims (Paper 18). Petitioner has filed a Reply to the Patent Owner
`
`Response (Paper 25) and an Opposition to the Motion to Amend. Three
`
`depositions have been noticed (Papers 19, 20, 21) and at least two
`
`depositions have been taken (Papers 23, 24). The oral argument in the ’111
`
`IPR has been combined with the oral arguments in related cases IPR2014-
`
`00110 and IPR2014-00395 and is scheduled for January 27, 2015 (Paper
`
`28). Thus, adding additional grounds raised in the Petition could impose
`
`significant delays in the ’111 IPR. Additional responses and replies would
`
`be required. Additional depositions of witnesses already deposed also may
`
`be required.
`
`Petitioner also asserts, incorrectly, that joinder is warranted because
`
`the Petition herein “involves the same patent, the same claims, the same
`
`parties, and a subset of the same prior art references as in IPR2014-00111.”
`
`Mot. for Joinder 7. The Petition herein does not involve a “subset of the
`
`same prior art references as in IPR2014-00111.” The inter partes review in
`
`the ’111 IPR involves only the patentability of claims 20–24 under 35
`
`U.S.C. § 102 as anticipated by Schreck; and the patentability of claims 22
`
`and 23 under 35 U.S.C. § 103 for obviousness over Schreck and Shu.
`
`6
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`

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`IPR2014-00823
`Patent 6,482,228 B1
`
`Decision to Institute, ’111 IPR, 20. The Petition herein is not a subset of the
`
`references or grounds involved in the pending ’111 IPR.
`
`Petitioner argues that, if we were to deny the Joinder Motion, and if
`
`Patent Owner were to prevail with respect to Schreck in the ’111 IPR, and if
`
`Patent Owner were to argue in the co-pending district court litigation that 35
`
`U.S.C. § 315(e)(1) estops Petitioner from relying on Figulla, and if the
`
`district court were to find estoppel, then Petitioner would be prejudiced.
`
`Mot. for Joinder 5–6. This series of contingencies is too hypothetical to
`
`outweigh the immediate and real prejudice that will result from joinder.
`
`Based on the analysis above, on the record before us, Petitioner has
`
`not shown that joinder is justified.
`
`C. Response to the Concurrence
`
`We write further to address the interpretation of § 315(c) set forth in
`
`the concurring opinion.
`
`Unlike the concurrence, we conclude that § 315(c) encompasses both
`
`party joinder and issue joinder, and as such, permits the joinder of any
`
`person who properly files a petition under § 311, including a petitioner who
`
`is already a party to the existing inter partes review. We reach this
`
`conclusion because § 315(c) permits the joinder of any person who properly
`
`files a petition under § 311. The only person excluded unambiguously from
`
`the scope of “any person” under § 315(c) is the patent owner, because the
`
`patent owner cannot file a petition under § 311 (“. . . a person who is not the
`
`owner of a patent may file with the Office a petition to institute an inter
`
`partes review of the patent”).
`
`Furthermore, joinder, as used in § 315(c), does not unambiguously
`
`refer solely to the joinder of a party, but rather, includes language related to
`
`7
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`

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`IPR2014-00823
`Patent 6,482,228 B1
`
`the joinder of issues presented in the petition that accompanies the request
`
`for joinder—that is, a request for joinder under § 315(c) requires a new
`
`petition. A decision on joinder follows consideration of the new petition and
`
`any preliminary response, and follows a determination that the new petition,
`
`on its own merits, warrants institution of an inter partes review under § 314
`
`of the statute.
`
`Section 315(c) thus permits any person to file a petition for review by
`
`the Director, and gives the Director discretion to join the petition to an
`
`existing inter partes review if it is determined that the threshold of § 314 is
`
`met. The limitation of § 314 is that the information presented in the petition
`
`must show that there is a reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition. 35
`
`U.S.C. § 314(a). If the potential for adding new issues by way of joinder
`
`were not possible, there is no reason why the Director would need to
`
`determine whether inter partes review under § 314 is warranted based on the
`
`petition and any preliminary response that may be filed.
`
`The joinder provision does not limit the scope of issues that can be
`
`raised in the petition, and does not require the scope of issues raised to be
`
`identical to issues in the existing inter partes review.6 Rather, § 315(c)
`
`permits the joinder of any issue related to a ground of unpatentability shown
`
`by any person to be reasonably likely to prevail with respect to at least 1 of
`
`the claims challenged. In other words, the statute provides the Director
`
`discretion to join the new petition of any party to an existing inter partes
`
`
`6 If only identical petitions could be joined to an existing inter partes review,
`there would be no need for substantive review under § 314.
`
`8
`
`

`
`IPR2014-00823
`Patent 6,482,228 B1
`
`review, once it is determined that that the procedural limitation of § 314 is
`
`met, which is a finding that the petition is likely to prevail on its merits.
`
`The concurrence cites to the majority opinion in Target Corp. v.
`
`Destination Maternity Corp., Case IPR2014-00508 (PTAB Sept. 25, 2014)
`
`(Paper 18), and the reasons expressed therein, as the basis for denying
`
`Medtronic’s motion for joinder. In reaching the decision to deny joinder, the
`
`majority in Target concluded that 35 U.S.C. § 315(c) does not permit issue
`
`joinder, rather it refers to joining a party and a party cannot be joined to a
`
`proceeding to which it is already a party. Target, Paper 18 at 3–5. We note
`
`that Target is not a precedential decision. We also note that views differing
`
`from those in Target were stated in other Board decisions. See, e.g., Ariosa
`
`Diagnostics v. Isis Innovation Ltd., Case IPR2012-00022 (PTAB Sept. 2,
`
`2014) (Paper 166).
`
`In reaching this conclusion, the majority in Target found that the use
`
`of the word “any” did not render the statute ambiguous, and concluded that
`
`the language in § 315(c) excludes from “any person” at least two persons
`
`from among those who may be joined to a proceeding. Specifically, the
`
`phrase “who properly files a petition under section 311” excludes the patent
`
`owner, and “as a party,” excludes persons who are already a party. Target,
`
`Paper 18 at 5. n.2. The phrase “as a party,” however, does not render the
`
`joinder provision of § 315(c) unambiguous. The only person excluded
`
`unambiguously from the scope of “any person” under § 315(c) is the patent
`
`owner, via reference to § 311. Otherwise, § 315(c) simply is labeled
`
`9
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`

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`IPR2014-00823
`Patent 6,482,228 B1
`
`“Joinder”7—as opposed to “Joinder of parties” as in 35 U.S.C. § 299—and,
`
`while the phrase “join as a party” is used, § 315(c) also contains language
`
`that suggests that the decision on whether to join is made after consideration
`
`of issues presented in a petition.
`
`The concurring opinion would have us render a decision on the
`
`request for joinder prior to considering the merits of the petition, which is
`
`contrary to the language of § 315(c). Section 315(c), via reference to § 314,
`
`only includes language referring to challenges of patent claims and makes no
`
`reference to other procedural requirements discussed in Target.8 In any case,
`
`the statute does not clearly guide us away from considering challenges to the
`
`claims of the patent. On the contrary, § 315(c) asks the Director to consider
`
`whether the petition contains information showing that the petitioner would
`
`prevail with respect to at least one claim, and gives the Director discretion to
`
`join the party if there is merit to the information presented in the petition.
`
`The majority in Target further reasoned that the one-year time bar
`
`under § 315(b) does not apply “to a request for joinder,” such that a time-
`
`barred petitioner may be permitted to join an existing inter partes review,
`
`but may not successfully petition for inter partes review. Target, Paper 18
`
`at 10. In reaching this conclusion, the Target majority reads the request for
`
`joinder as a separate filing, one that does not require a petition. Again,
`
`
`7 35 U.S.C. § 315 uses the heading “Relation to other proceedings or
`actions” and subsection § 315(c) is labeled “Joinder.”
`8 The majority in Target noted that the filing of a petition by a prospective
`party serves many purposes other than setting forth the challenges to claims
`in a patent, purposes such as meeting the requirements of identifying real
`parties-in-interest, related matters, lead and backup counsel, and service
`information. Target, Paper 18 at 5–6.
`
`10
`
`

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`IPR2014-00823
`Patent 6,482,228 B1
`
`however, the joinder statute itself makes reference to both the petition and
`
`preliminary response, indicating that the merits of the petition that
`
`accompanies the request for joinder are to be considered—that is, a motion
`
`for joinder must include a petition satisfying the threshold of § 314 before a
`
`party successfully may be joined. The request for joinder cannot be treated
`
`as a separate filing because a properly filed request for joinder must be
`
`accompanied by a petition that meets the standard of § 314. Section 315(c)
`
`gives discretion as to whether to join a person who properly files a petition,
`
`and it is the Director’s discretion that guards against patent owner
`
`harassment and/or over-burdening Office resources.
`
`The concurrence also reasons that, in contrast to joinder under
`
`§ 315(c), § 315(d) relates to the consolidation of issues. A review of the
`
`legislative history of the America Invents Act9 (“AIA”), however, does not
`
`clearly lead one to conclude that Congress used “joinder” narrowly to refer
`
`solely to party joinder. Rather, throughout the Senate Debates “joinder” is
`
`used in the context of issue joinder. See e.g., 157 Cong. Rec. S 1376 (daily
`
`ed. Mar. 8, 2011) (statement of Sen. Kyl) (“If a party seeking joinder also
`
`presents additional challenges to validity that satisfy the threshold for
`
`instituting a proceeding, the Office will either join that party and its new
`
`arguments to the existing proceeding, or institute a second proceeding for
`
`the patent.”); 157 Cong. Rec. S 9988 (daily ed. Sept. 27, 2008) (statement of
`
`Sen. Kyl) (“[A]dditional petitions can be joined only if, among other things,
`
`they are properly filed.”); id. (“[A] procedurally proper successive petition
`
`
`9 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011).
`
`11
`
`

`
`IPR2014-00823
`Patent 6,482,228 B1
`
`for second-period review may be joined to a pending proceeding at the
`
`discretion of the Director, even if the 329(b)(2) deadline has not been met,
`
`so long as the Director determines that the petition satisfies the threshold set
`
`in section 327(c).”) “Consolidation,” as used in § 315(d), on the other hand,
`
`is used to refer to the consolidation of different proceeding before the Office.
`
`See 157 Cong. Rec. S 9988 (daily ed. Sept. 27, 2008) (statement of Sen.
`
`Kyl) (“Section 325(c) gives the PTO broad discretion to consolidate, stay, or
`
`terminate any PTO proceeding involving a patent if that patent is the subject
`
`of a postgrant review proceeding. It is anticipated, for example, that if a
`
`second-period proceeding is instituted and reexam is sought, the Director
`
`would be inclined to stay the postgrant review during exhaustion of the
`
`reexam. On the other hand, if a postgrant review is near completion, the
`
`Director may consolidate or terminate any other PTO proceeding that is
`
`initiated with regard to that patent.”) Thus, the legislative history does not
`
`unambiguously support a conclusion that Congress clearly intended to
`
`address joinder of parties under § 315(c) and consolidation of issues under
`
`§ 315(d).
`
`III. CONCLUSION
`
`We deny the Joinder Motion and, therefore, deny the Second Petition
`
`because it was not filed within the time limits imposed under 35 U.S.C.
`
`§ 315(b).
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that Petitioner’s request for joinder is denied.
`
`FURTHER ORDERED that the Petition for inter partes review of
`
`claims 20–24 of the ’228 patent is denied.
`
`12
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`

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`IPR2014-00823
`Patent 6,482,228 B1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MEDTRONIC, INC., MEDTRONIC VASCULAR, INC., AND
`MEDTRONIC COREVALVE, LLC,
`Petitioner,
`
`v.
`
`TROY R. NORRED, M.D.,
`Patent Owner.
`_______________
`
`
`Case IPR2014-00823
`Patent 6,482,228 B1
`_______________
`
`Before SHERIDAN K. SNEDDEN, BARRY L. GROSSMAN, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge, concurring.
`
`I concur with the majority in the results that the Joinder Motion and
`
`the Petition are denied, but I would reach those results for different reasons.
`
`I. THE JOINDER MOTION
`
`I would deny the Joinder Motion based on the interpretation of 35
`
`U.S.C. § 315(c) as set forth in the majority opinion in Target Corp. v.
`
`Destination Maternity Corp., Case IPR2014-00508 (PTAB Sept. 25, 2014)
`
`(Paper 18) (“the Target Decision”). Medtronic moves “for Joinder of the
`
`Second Petition for Inter Partes Review of U.S. Patent No. 6,482,228 . . .,
`
`with the instituted inter partes review, Medtronic, Inc., et al. v. Troy R.
`
`
`
`

`
`IPR2014-00823
`Patent 6,482,228 B1
`
`Norred, Case No. IPR2014-00111, pursuant to 35 U.S.C. § 315(c) and 37
`
`C.F.R § 42.122.” Mot. for Joinder 2. Thus, Medtronic seeks to consolidate
`
`issues presented in the Petition with issues on which we have instituted
`
`review in the ’111 IPR. Under the interpretation of § 315(c) expressed in the
`
`Target Decision, a party in an existing inter partes review may not be
`
`“joined” to that review, and additional issues presented in a new petition
`
`may not be “joined” to an existing inter partes review. For both reasons, I
`
`would deny Medtronic’s Joinder Motion.
`
`I also conclude that § 315(d) further supports the interpretation of
`
`§ 315(c) that is set forth in the Target Decision. I consider the text of
`
`§ 315(d) informative in interpreting § 315(c) because, “[i]n expounding a
`
`statute, we must not be guided by a single sentence or member of a sentence,
`
`but look to the provisions of the whole law, and to its object and policy.”
`
`Kelly v. Robinson, 479 U.S. 36, 43 (1986) (quoting Offshore Logistics, Inc.
`
`v. Tallentire, 477 U.S. 207, 222 (1986)).
`
`To the extent that Medtronic seeks to present new issues in the
`
`Petition and consolidate those issues with those already present in the ’111
`
`IPR, Medtronic seeks relief under the wrong provision of § 315. Congress
`
`granted authority to the Director to consolidate issues in one inter partes
`
`review with issues in another inter partes review as follows in § 315(d),
`
`which states in pertinent part:
`
`(d) Multiple Proceedings.— . . . during the pendency of
`an inter partes review, if another proceeding or matter involving
`the patent is before the Office, the Director may determine the
`manner in which the inter partes review or other proceeding or
`matter may proceed, including providing for . . . consolidation
`. . . of any such matter or proceeding.”
`
`2
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`

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`IPR2014-00823
`Patent 6,482,228 B1
`
`35 U.S.C. § 315(d). The presence of § 315(d) further supports my
`
`conclusion that Congress intended to distinguish joinder of persons under
`
`§ 315(c) from consolidation of issues under § 315(d). In the Joinder Motion,
`
`Medtronic seeks the relief that is potentially available under § 315(d) but
`
`moves for that relief pursuant to § 315(c). I believe that the Board is not
`
`authorized to grant the relief requested by Medtronic under § 315(c). For
`
`these reasons alone, I concur in the result reached by the majority in denying
`
`the Joinder Motion.
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`II. THE PETITION
`
`I would deny the Petition solely based upon Medtronic having been
`
`served with a complaint alleging infringement of the ’228 patent more than
`
`one year before filing the Petition.1 Section 315(b) states in pertinent part:
`
`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, . . . 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).
`
`35 U.S.C. § 315(b). The one-year bar expressed in § 315(b) applies to all
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`petitions filed more than one year after the petitioner is served with a
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`complaint for infringement. The last sentence carves out an exception to the
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`one-year bar that applies solely to a “request for joinder.” This exception
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`does not apply to a petition that is filed concurrently with a request for
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`joinder. Thus, I do not consider the decision on the Joinder Motion to be
`
`
`1 I disagree with the majority to the extent that it concludes that the denial of
`the Joinder Motion is a condition precedent to the one-year bar in § 315(b)
`precluding institution of inter partes review.
`
`3
`
`

`
`IPR2014-00823
`Patent 6,482,228 B1
`
`relevant to whether the one-year bar in § 315(b) precludes institution of the
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`review requested in the Petition.
`
`Medtronic acknowledges that it was served with a complaint alleging
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`infringement of the ’228 patent more than one year before it filed the
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`Petition. Pet. 6. I would find that the one-year bar set forth in § 315(b)
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`prevents the Board from instituting the inter partes review sought in the
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`Petition. For these reasons alone, I concur in the result reached by the
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`majority in denying institution of an inter partes review.
`
`4
`
`

`
`IPR2014-00823
`Patent 6,482,228 B1
`
`PETITIONER:
`
`Jack Barufka
`Evan Finkel
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`jack.barufka@pillsburylaw.com
`evan.finkel@pillsburylaw.com
`
`PATENT OWNER:
`
`James J. Kernell
`ERICKSON KERNELL DERUSSEAU & KLEYPAS, LLC
`jjk@kcpatentlaw.com
`
`David L. Marcus
`BARTLE & MARCUS LLC
`dmarcus@bmlawkc.com
`
`5