Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 14
`Entered: March 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2016-00209
`Patent 5,591,678
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JENNIFER MEYER CHAGNON, and
`JEFFREY W. ABRAHAM Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`I.
`
`INTRODUCTION
`Sony Corporation (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1–18 of U.S. Patent No. 5,591,678 (Ex. 1001,
`“the ’678 patent”). Paper 2 (“Pet.”). With the Petition, Petitioner filed a
`
`
`571-272-7822
`
`
`Paper No. 14
`Entered: March 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner.
`____________
`
`Case IPR2016-00209
`Patent 5,591,678
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JENNIFER MEYER CHAGNON, and
`JEFFREY W. ABRAHAM Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`I.
`
`INTRODUCTION
`Sony Corporation (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1–18 of U.S. Patent No. 5,591,678 (Ex. 1001,
`“the ’678 patent”). Paper 2 (“Pet.”). With the Petition, Petitioner filed a
`
`
`
`IPR2016-00209
`Patent 5,591,678
`
`Motion for Joinder (Paper 3, “Mot.”), seeking to join this proceeding with
`Sony Corp. v. Raytheon Co., Case IPR2015-01201 (“the 1201 IPR”).
`Raytheon Company (“Patent Owner”) filed a Response to Petitioner’s
`Motion for Joinder. Paper 9 (“Resp.”). In a separate decision, entered
`concurrently, we institute an inter partes review in the instant proceeding as
`to claims 1–18 of the ’678 patent. Paper 12. Upon consideration of the
`Motion and the Response, and for the reasons explained below, Petitioner’s
`Motion for Joinder is denied.
`II. BACKGROUND
`Petitioner filed its Petition and Motion for Joinder on November 18,
`2015, prior to the institution date of the 1201 IPR. The instant Petition
`asserts that claims 1–18 of the ’678 patent are unpatentable under 35 U.S.C.
`§ 102(b) as anticipated by Liu1 and/or under 35 U.S.C. § 103(a) as obvious
`over Liu in combination with various other references. Pet. 3, 20–58. In
`the 1201 IPR, trial was instituted on December 2, 2015 as to claims 1, 5–7,
`and 9–13 as being unpatentable under 35 U.S.C. § 102(e) as anticipated by
`Bertin2 or under 35 U.S.C. § 103(a) as obvious over Bertin in combination
`with various other references; and as to claims 1, 2–5, 8, 10, and 13–18 as
`being unpatentable under 35 U.S.C. § 103(a) as obvious over Morimoto3 in
`combination with various other references. See 1201 IPR, slip op. at 23–24
`(PTAB Dec. 2, 2015) (Paper 6).
`
`
`1 U.S. Patent No. 4,422,091, issued Dec. 20, 1983 (“Liu”).
`2 U.S. Patent No. 5,202,754, issued Apr. 13, 1993 (“Bertin”).
`3 JP Appl. Pub. No. 64-18248, published Jan. 23, 1989 (“Morimoto”).
`
`
`
`2
`
`
`
`IPR2016-00209
`Patent 5,591,678
`
`III. ANALYSIS
`An inter partes review may be joined with another inter partes
`review, subject to the provisions 35 U.S.C. § 315(c),4 which governs joinder
`of inter partes review proceedings:
`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.
`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. The Board will
`determine whether to grant joinder on a case-by-case basis, taking into
`account the particular facts of each case, substantive and procedural issues,
`and other considerations. 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” and claim construction issues). When
`exercising its discretion, the Board is mindful that patent trial regulations,
`including the rules for joinder, must be construed to secure the just, speedy,
`
`
`4 Petitioner cites to Target Corp. v. Destination Maternity Corp.,
`Case IPR2014-00508, slip op. at 10 (PTAB Feb. 12, 2015) (Paper 28)
`(Decision Granting Request For Rehearing), and asserts that the Board has
`discretion under 35 U.S.C. § 315(c) to allow joinder of a person to an
`ongoing inter partes review when, as here, that person is already a party to
`the ongoing inter partes review. We need not address this issue, however,
`because we are not persuaded that the circumstances in this proceeding
`warrant joinder, regardless of whether same party joinder is permissible.
`
`
`
`3
`
`
`
`IPR2016-00209
`Patent 5,591,678
`
`and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
`37 C.F.R. § 42.1(b).
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: set forth the reasons joinder is appropriate; identify any new
`grounds of unpatentability asserted in the petition; explain what impact (if
`any) joinder would have on the trial schedule for the existing review; and
`address specifically how briefing and discovery may be simplified. See
`Kyocera Corp. v. Softview, LLC, Case IPR2013-00004, slip op. at 4 (PTAB
`Apr. 24, 2013) (Paper 15) (representative); see also “Frequently Asked
`Questions H5,” http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`Petitioner argues that joinder is appropriate because the instant
`Petition and the 1201 IPR involve the same parties, the same patent, certain
`common issues, and overlapping prior art. Mot. 4–7. Petitioner further
`notes that joinder is not required to avoid a time-bar under 35 U.S.C.
`§ 315(b) in this case. Id. at 7. Petitioner additionally asserts that, “because
`the present IPR petition challenges the same claims and presents overlapping
`prior art and similar issues, joining the two petitions will greatly simplify
`briefing, discovery, and other scheduling issues.” Id. at 8. According to
`Petitioner, “joining the petitions would serve to conserve the parties’ and the
`Board’s resources.” Id. Finally, Petitioner argues that joinder would not
`prejudice Patent Owner because Petitioner “is prepared to accommodate any
`reasonable logistical or scheduling request of Patent Owner.” Id. at 8–9.
`In its Response to Petitioner’s Motion, Patent Owner indicates that it
`“does not oppose joinder provided that the schedule is adjusted to (1) allow
`Patent Owner sufficient time and opportunity to address the numerous issues
`
`
`
`4
`
`
`
`IPR2016-00209
`Patent 5,591,678
`
`raised by Petitioners and (2) provide for a single Patent Owner Response to
`achieve the efficiencies of joinder.” Resp. 1.
`Based on the particular facts and circumstances of this proceeding, we
`are not persuaded that joinder is appropriate. As noted above, the instant
`Petition raises numerous substantive issues that are not before the Board in
`the 1201 IPR, i.e., the asserted grounds are based, at least in part, on
`different prior art references than those at issue in the 1201 IPR. Further, the
`1201 IPR is already well underway. In fact, Patent Owner already filed its
`Patent Owner Response in the 1201 IPR. See 1201 IPR, Paper 22 (PO
`Resp.), Paper 23 (redacted version), filed March 11, 2016. Joinder would
`require delaying the upcoming due dates in the 1201 IPR and extending the
`overall schedule by several months. Additionally, because Patent Owner has
`already filed its Patent Owner Response in the 1201 IPR, Patent Owner
`would no longer benefit from many of the efficiencies that potentially could
`be achieved through joinder.
`Having considered both Petitioner’s Motion for Joinder and Patent
`Owner’s Response thereto, we determine that Petitioner has not established
`persuasively that joinder is appropriate in this instance.
`
`Accordingly, it is
`ORDERED that Petitioner’s Motion for Joinder is denied.
`
`
`
`
`
`5
`
`
`
`IPR2016-00209
`Patent 5,591,678
`
`PETITIONER:
`Matthew A. Smith
`Zhuanjia Gu
`TURNER BOYD LLP
`smith@turnerboyd.com
`gu@turnerboyd.com
`
`Robert Hails
`RHails@bakerlaw.com
`
`PATENT OWNER:
`Thomas J. Filarski
`Brian Fahrenbach
`John Abramic
`STEPTOE & JOHNSON, LLP
`tfilarski@steptoe.com
`678IPR@steptoe.com
`jabramic@steptoe.com
`
`
`
`6
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