Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
` Paper 17
`Entered: March 25, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`REGIONS FINANCIAL CORPORATION, ADVANCE AMERICA, CASH
`ADVANCE CENTERS, INC., and CNU ONLINE HOLDINGS, LLC
`F/K/A CASH AMERICA NET HOLDINGS, LLC
`Petitioners
`
`v.
`
`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY LLC
`Patent Owner
`_______________
`
`Case CBM2014-00012
`US Patent 6,625,582
`_______________
`
`
`
`Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`ORDER
`Petitioners’ Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
` Paper 17
`Entered: March 25, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`REGIONS FINANCIAL CORPORATION, ADVANCE AMERICA, CASH
`ADVANCE CENTERS, INC., and CNU ONLINE HOLDINGS, LLC
`F/K/A CASH AMERICA NET HOLDINGS, LLC
`Petitioners
`
`v.
`
`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY LLC
`Patent Owner
`_______________
`
`Case CBM2014-00012
`US Patent 6,625,582
`_______________
`
`
`
`Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`ORDER
`Petitioners’ Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`CBM2014-00012
`US Patent 6,625,582
`
`
`Introduction
`
`Petitioners Regions Financial Corporation, Advance America, Cash
`
`Advance Centers, Inc., and CNU Online Holdings, LLC F/K/A Cash America Net
`
`Holdings, LLC (collectively, “Petitioners”) filed a Petition (Paper 9) to institute a
`
`covered business method patent review of claims 1, 13, 14, 18, 30, and 31 of
`
`Patent 6,625,582 B2 (Ex. 1003, “’582 patent”) pursuant to 35 U.S.C. §§ 311-319
`
`and a motion for joinder with Case CBM2013-00014 (Paper 7) (“Mot.”). Patent
`
`Owner Retirement Capital Access Management Company LLC filed an opposition
`
`(Paper 14) (“Opp.”) to Petitioners’ motion. For the reasons that follow,
`
`Petitioners’ motion is denied.
`
`
`
`Related Case CBM2013-00014
`
`On February 1, 2013, U.S. Bancorp filed a petition to institute a covered
`
`business method patent review of claims 1, 13, 14, 18, 30, and 31 of the
`
`’582 patent. CBM2013-00014, Paper 1. On June 5, 2013, the Board denied U.S.
`
`Bancorp’s request to add one or more of the current Petitioners to the proceeding
`
`for CBM2013-00014. CBM2013-00014, Paper 8. In that same Order, the Board
`
`stated that the U.S. Bancorp failed to provide any statute or rule that authorizes
`
`joinder of parties to an already-filed petition without the filing of an additional
`
`petition.
`
`On September 20, 2013, the Board instituted a covered business method
`
`patent review in CBM2013-00014 of claims 1, 13, 14, 18, 30, and 31 of the ’582
`
`patent. CBM2013-00014, Paper 12, 14. Petitioners subsequently filed their
`
`Petition in the instant proceeding, on October 15, 2014, challenging the same
`
`claims of the ’582 patent.
`
` 2
`
`
`
`
`
`
`
`CBM2014-00012
`US Patent 6,625,582
`
`
`Analysis
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`
`(2011) (“AIA”), created new administrative trial proceedings, including covered
`
`business method patent review, as an efficient, streamlined, and cost-effective
`
`alternative to district court litigation. The AIA permits the joinder of like
`
`proceedings. The Board, acting on behalf of the Director, has the discretion to join
`
`a covered business method patent review with another covered business method
`
`patent review. 35 U.S.C. § 325. Section 325(c) provides (emphasis added):
`
`JOINDER. – If more than 1 petition for a post-grant review under this
`chapter is properly filed against the same patent and the Director
`determines that more than 1 of these petitions warrants the institution
`of a post-grant review under section 324, the Director may consolidate
`such reviews into a single post-grant review.
`
`Joinder may be authorized when warranted, but the decision to grant joinder
`
`is discretionary. See 35 U.S.C. § 325(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, and inexpensive resolution of every proceeding. See 35
`
`U.S.C. § 326(b); 37 C.F.R. § 42.1(b).
`
`As the moving party, Petitioners have the burden of proof in establishing
`
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c). A motion for joinder
`
`should: (1) set forth the reasons why joinder is appropriate; (2) identify any new
`
` 3
`
`
`
`
`
`
`
`CBM2014-00012
`US Patent 6,625,582
`
`grounds of unpatentability asserted in the petition; (3) explain what impact (if any)
`
`joinder would have on the trial schedule for the existing review; and (4) address
`
`specifically how briefing and discovery may be simplified. See e.g. Kyocera Corp.
`
`v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013).
`
`Patent Owner argues that Petitioners’ motion for joinder should be denied as
`
`untimely under 37 C.F.R. § 42.122(b) because Petitioners waited over four months
`
`after the Board denied the request for joinder in CBM2013-00014 to file their
`
`Petition. Opp. at 3. Patent Owner argues that if Petitioners had filed their Petition
`
`for the instant proceeding shortly after the denial of the joinder request in
`
`CBM2013-00014, Petitioners could have avoided any significant prejudice
`
`associated with a consolidation of the proceedings.
`
`Petitioners allege that the Petition raises the same grounds for invalidity as
`
`raised in the Petition for CBM2013-00014 or “otherwise addresses issues raised in
`
`Patent Owner’s Preliminary Response to same.” Mot. 2. Petitioners fail to
`
`address, however, that although the current Petition asserts the same challenge as
`
`the Petition in CBM2013-00014, the current Petition provides new arguments for
`
`why the challenged claims should be found patent ineligible under 35 U.S.C.
`
`§ 101. See Paper 9, 43-50. Furthermore, the current Petition provides additional
`
`claim construction arguments not made in the Petition in CBM2013-00014. See id.
`
`16-17.
`
`Under the circumstances, joinder would have a significant adverse impact on
`
`the Board’s ability to complete the existing proceeding in a timely manner, which
`
`weighs against granting the motion for joinder. The Board is charged with
`
`securing the just, speedy, and inexpensive resolution of every proceeding, and has
`
`the discretion to join or not join proceedings to ensure that objective is met. 37
`
`C.F.R. §§ 42.1(b), 42.122. The related case, CBM2013-00014, was filed almost a
`
` 4
`
`
`
`
`
`
`
`CBM2014-00012
`US Patent 6,625,582
`
`year ago (March 29, 2013) and is already well underway, with the oral argument
`
`scheduled for April, 1, 2014. See CBM2013-00014, Paper 13. Joinder at this stage
`
`would require a lengthy delay in the ongoing review.
`
`Petitioners have not shown that the patentability issues raised in the instant
`
`Petition can be resolved in a joined proceeding without substantially affecting the
`
`schedule in CBM2013-00014. Petitioners, therefore, have not satisfied their
`
`burden of proof in showing entitlement to the requested relief—namely, joinder
`
`with Case CBM2013-00014. Accordingly, we decline to exercise our discretion
`
`under 35 U.S.C. § 315(c) to authorize joinder, and deny Petitioners’ motion.
`
`
`
`
`
`ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioners’ motion for joinder is denied.
`
`
`
` 5
`
`
`
`
`
`
`
`CBM2014-00012
`US Patent 6,625,582
`
`
`
`For Petitioners:
`
`John Caracappa
`Harold Fox
`Gretchen Miller
`William Barrow
`STEPTOE & JOHNSON LLP
`jcaracappa@steptoe.com
`hfox@steptoe.com
`gmiller@steptoe.com
`wbarrow@steptoe.com
`
`Christopher J. Chan
`Mia K. Fiedler
`SUTHERLAND ASBILL & BRENNAN LLP
`chris.chan@sutherland.com
`mia.fiedler@sutherland.com
`
`Mark T. Deming
`mdeming@polsinelli.com
`POLSINELLI PC
`
`For Patent Owner:
`
`Casey Griffith
`Shital Desai
`KLEMCHUK KUBASTA LLP
`casey.griffith@kk-llp.com
`sita.desai@kk-llp.com
`
`
`
` 6
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