Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 13
`Entered: March 20, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SKYHAWKE TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`L&H CONCEPTS, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01485
`Patent 5,779,566
`____________
`
`
`Before JAMES T. MOORE, PATRICK R. SCANLON, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`And Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 13
`Entered: March 20, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SKYHAWKE TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`L&H CONCEPTS, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01485
`Patent 5,779,566
`____________
`
`
`Before JAMES T. MOORE, PATRICK R. SCANLON, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`And Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`IPR2014-01485
`Patent 5,779,566
`
`
`I. INTRODUCTION
`Petitioner, SkyHawke Technologies, LLC, filed a corrected Petition
`(Paper 5, “Petition” or “Pet.”)1 to institute an inter partes review of claims 6,
`15, and 16 of U.S. Patent No. 5,779,566 (Ex. 1001, “the ’566 patent”)
`pursuant to 35 U.S.C. §§ 311–319. The Petition involves the same parties and
`patent at issue in instituted trial proceeding, SkyHawke Technologies, LLC v.
`L&H Concepts, LLC, Case IPR2014-00438 (“the ’438 proceeding”).2
`Petitioner concurrently filed a Motion for Joinder (Paper 3, “Mot.”) seeking
`joinder of the Petition with the ’438 proceeding. The Motion for Joinder was
`filed within one month after institution of the ’438 proceeding, as required by
`37 C.F.R. § 42.122(b). Petitioner also filed Petitioner’s Reply in Support of
`its Motion for Joinder (Paper 11).
`Patent Owner, L&H Concepts, LLC, filed a Patent Owner’s Response
`to Motion for Joinder (Paper 10) and a Preliminary Response (Paper 12,
`“Prelim. Resp.”). We consider and rule upon the Petition pursuant to the
`authority granted by the Director under 37 C.F.R. § 42.4.
`For the reasons provided below, we deny Petitioner’s Motion for
`Joinder. We also deny the Petition and do not institute an inter partes review
`as to claims 6, 15, and 16 of the ’566 patent.
`
`
`
`1 Paper 5 is a corrected Petition for inter partes review, filed September 25,
`2014, and subsequently accepted by the Board. See Paper 7. The original
`Petition for inter partes review (Paper 1) has been accorded the filing date of
`September 11, 2014. Paper 4.
`2 The same parties and patent also are involved in related instituted trial
`proceeding, SkyHawke Technologies, LLC v. L&H Concepts, LLC, Case
`IPR2014-00437.
`
`
`
`2
`
`
`
`IPR2014-01485
`Patent 5,779,566
`
`
`II. ANALYSIS
`A. Decision on the Motion for Joinder
`Petitioner argues that the requested joinder is appropriate because
`(1) “joinder will promote the efficient determination of the patentability of the
`’566 patent” (Mot. 7); (2) “there will be no prejudice to [Patent Owner] from
`joining the proceedings” (id.); and (3) Petitioner “will suffer undue prejudice”
`if the Petition is not joined to the ’438 proceeding (id. at 8). Patent Owner
`takes exception with all three of these assertions and argues that the Motion
`for Joinder should be denied. See generally Paper 10.
`In addition, Patent Owner argues Petitioner’s Motion for Joinder should
`be denied because 35 U.S.C. § 315(c) provides for the joinder of parties only,
`not issues, and does not contemplate joinder by someone who is already a
`party. Prelim. Resp. 3–5 (citing Target Corp. v. Destination Maternity Corp.,
`Case IPR2014-00508 (PTAB Sept. 25, 2014) (Papers 18, 20)). We agree with
`Patent Owner.
`Section 315(c) provides:
`(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.
`In our view, the phrase “join as a party” indicates that only a person who is
`not already a party to an instituted inter partes review can be joined to the
`proceeding. A person cannot be joined as a party to a proceeding in which it
`is already a party. The statute does not refer to the joining of a petition or new
`
`
`
`
`3
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`IPR2014-01485
`Patent 5,779,566
`
`patentability challenges presented therein, nor does the statute refer to the
`joining of a new issue (as opposed to a person).
`Although the statute uses the expansive term “any person,” the overall
`language of § 315(c) places limits on this term. For example, the phrase “who
`properly files a petition under section 311” excludes the owner of the patent at
`issue from “any person” because § 311(a) specifies “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.” Similarly, the phrase “join as a party” excludes a
`person who is already a party.
`Furthermore, to the extent there is any ambiguity in § 315(c), the
`legislative history supports our view that § 315(c) provides for joinder of only
`a person who is not already a party to the proceeding. Specifically, the Final
`Committee Report states, under §§ 315(c) and 325(c), “[t]he Director may
`allow other petitioners to join an inter partes or post-grant review.” H.R. REP.
`NO. 112-98, pt.1, at 76 (2011) (emphasis added). We discern no reason why
`the drafters intentionally would describe only part of their understanding of
`what the statute provides, for example, by referring to joinder of “other
`petitioners,” if, in fact, they understood the statute to provide for joinder also
`of same petitioners.
`In view of the foregoing, we determine that the relief requested by
`Petitioner—joining the Petition to an instituted inter partes review to which
`Petitioner is already a party—is not permitted under § 315(c). Accordingly,
`Petitioner’s Motion for Joinder is denied.
`
`
`
`
`
`
`4
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`IPR2014-01485
`Patent 5,779,566
`
`
`B. Decision on the Petition
`
`Institution of inter partes review is barred 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 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).
`The record indicates that Petitioner was served with a complaint
`asserting infringement of the ’566 patent more than one year before filing the
`Petition. Pet. 3. Accordingly, in view of our decision to deny Petitioner’s
`Motion for Joinder, we deny the Petition because it was not filed within the
`time limits imposed under 35 U.S.C. § 315(b).
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Motion for Joinder is denied; and
`FURTHER ORDERED that the Petition is denied and no trial is
`instituted.
`
`
`
`
`
`5
`
`
`
`IPR2014-01485
`Patent 5,779,566
`
`
`
`PETITIONER:
`Thomas J. Fisher
`Scott McKeown
`Alexander Englehart
`Christopher Ricciuti
`OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
`cpdocketfisher.oblon.com
`cpdocketmckeown.oblon.com
`cpdocketenglehart.oblon.com
`cpdocketricciuti@oblon.com
`
`
`PATENT OWNER:
`David M. Hoffman
`Matthew K. Wernli
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`IPR30912-0003IP3@fr.com
`
`
`
`
`6
`
`
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