Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Date Entered: February 25, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`____________
`
`Case IPR2013-00109 (TLG)
`Patent 6,757,717 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, SCOTT R. BOALICK, and THOMAS L.
`GIANNETTI, Administrative Patent Judges.
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
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`
`
`571-272-7822
`
`Paper 15
`Date Entered: February 25, 2013
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`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`____________
`
`Case IPR2013-00109 (TLG)
`Patent 6,757,717 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, SCOTT R. BOALICK, and THOMAS L.
`GIANNETTI, Administrative Patent Judges.
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
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`
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`
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`
`
`IPR2013-00109
`Patent 6,757,717
`
`
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`I. INTRODUCTION
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`Petitioner Microsoft Corporation requests joinder of this proceeding with
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`instituted trial proceeding IPR2012-00026. Patent Owner has advised the Board
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`that it does not oppose, and in fact encourages joinder. Paper 9. The present
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`motion was filed concurrently with Petitioner’s Second Petition for Inter Partes
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`Review (Paper 1) involving the same patent and parties as IPR2012-00026. In a
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`separate decision, entered today, we grant the second Petition as to all claims. For
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`the reasons that follow, we also grant Petitioner’s motion for joinder.
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`II. BACKGROUND
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`Petitioner presents a Statement of Material Facts in support of its motion.
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`Mot. 2-3. Those facts are not opposed by Patent Owner and therefore stand as
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`admitted. 37 C.F.R. § 42.24(b). In connection with this motion, the Board makes
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`the following additional findings:
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`1. IPR2012-00026 and this proceeding involve the same parties.
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`2. IPR2012-00026 and this proceeding involve the same patent (US
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`Patent 6,757,717).
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`
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`3. The Yohe patent (US 5,853,943) involved in this proceeding as prior art is
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`also cited in IPR2012-00026.
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`
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`4. There is no discernible prejudice either to Patent Owner or Petitioner from
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`joining this proceeding with IPR2012-00026.
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`2
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`IPR2013-00109
`Patent 6,757,717
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`5. Petitioner proceeded expeditiously in filing a second Petition after
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`learning that additional claims were being asserted by Patent Owner in concurrent
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`district court litigation.
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`6. Petitioner’s motion was filed concurrently with the second Petition and is
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`therefore timely under 37 C.F.R. 42 § 122(b). See infra.
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`
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`7. Joinder of this proceeding with IPR2012-00026 will not unduly delay the
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`resolution of either proceeding. In that regard a Revised Scheduling Order for the
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`joined proceedings is being entered concurrently with this decision.
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`8. Joinder of this proceeding with IPR2012-00026 will help “secure the just,
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`speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b).
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`
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`9. Petitioner has established good cause for joining this proceeding with
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`IPR2012-00026.
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`III. DISCUSSION
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`
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`The Leahy-Smith America Invents Act (AIA) permits joinder of like review
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`proceedings. Thus, an inter partes review (IPR) may be joined with another inter
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`partes review, and a post-grant review (PGR) may be joined with another post-
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`grant review. The statutory provision governing joinder of inter partes review
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`proceedings is 35 U.S.C. § 315(c), which reads as follows:
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`(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.
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`3
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`IPR2013-00109
`Patent 6,757,717
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`As is apparent from the statute, a request for joinder affects certain deadlines
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`under the AIA. Normally, a petition for inter partes review filed more than one
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`year after the petitioner (or the petitioner’s real party-in interest or privy) is served
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`with a complaint alleging infringement of the patent is barred. 35 U.S.C. § 315(b),
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`as amended; 37 C.F.R. § 42.101(b). However, the one-year time bar does not
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`apply to a request for joinder. 35 U.S.C. § 315(b)(final sentence); 37 C.F.R.
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`§ 42.122(b). This is an important consideration here, because Microsoft was
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`served with a complaint asserting infringement of the ʼ717 patent more than a year
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`before filing the second Petition. Pet. 1. Thus, absent joinder of this proceeding
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`with IPR2012-00026, the second Petition would be barred. Moreover, in the case
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`of joinder, the one-year time requirement for issuing a final determination in an
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`inter partes review may be adjusted. 35 U.S.C. § 316(a)(11), as amended.
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`IV. ANALYSIS
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`
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`The policy basis for construing our rules for these proceedings is set forth in
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48758 (Aug. 14, 2012):
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`“The rules are to be construed so as to ensure the just, speedy, and inexpensive
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`resolution of a proceeding . . . .” See also Rule 1(b) (37 CFR § 42.1(b)). Based
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`upon the admitted facts and our own findings, supra, we have determined that this
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`policy would best be served by granting Petitioner’s motion. The same patents and
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`parties are involved in both proceedings. There is an overlap in the cited prior art.
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`There is no discernible prejudice to either party. Petitioner has been diligent and
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`timely in filing the motion. And while some adjustments to the schedule have been
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`4
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`IPR2013-00109
`Patent 6,757,717
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`necessary, there is not undue delay. In sum, the relevant factors of which we are
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`aware all weigh in favor of granting this motion.
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`V. ORDER
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`
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`In view of the foregoing, it is, therefore,
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`ORDERED that Petitioner’s Motion for Joinder is granted;
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`FURTHER ORDERED that this proceeding is joined with IPR2012-
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`00026;
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`FURTHER ORDERED that the Revised Scheduling Order entered
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`concurrently with this Decision shall hereafter govern the schedule of the joined
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`proceedings;
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`FURTHER ORDERED that this proceeding is terminated under 37 C.F.R.
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`§ 42.72 and all further filings in the joined proceedings shall be made in IPR2012-
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`00026;
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`
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`FURTHER ORDERED that the case caption in IPR2012-00026 shall be
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`changed to reflect the joinder with this proceeding in accordance with the attached
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`example.
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`5
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`IPR2013-00109
`Patent 6,757,717
`
`For Patent Owner
`
`Matthew L. Cutler
`Harness, Dickey & Pierce, PLC
`mcutler@hdp.com
`
`Bryan K. Wheelock
`Harness, Dickey & Pierce, PLC
`bwheelock@hdp.com
`
`For Petitioner
`
`John D. Vandenberg
`Klarquist Sparkman LLP
`john.vandenberg@klarquist.com
`
`Stephen J. Joncus
`Klarquist Sparkman LLP
`stephen.joncus@klarquist.com
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`6
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`____________
`
`Case IPR2012-00026 (TLG)
` Case IPR2013-00109 (TLG)
`Patent 6,757,717 B1
`____________
`
`
`
`
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