Trials@uspto.gov
`571-272-7822
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` Paper 18
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` Entered: 10 October 2014
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EIZO CORPORATION,
`Petitioner,
`
`v.
`
`BARCO N.V.,
`Patent Owner.
`
`
`Case IPR2014-00358
`Patent RE43,707 E
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, JAMES B. ARPIN, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge DESHPANDE.
`
`Opinion Concurring filed by Administrative Patent Judge McKONE.
`
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`571-272-7822
`
`
`
`
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`
`
`
`
`
` Paper 18
`
`
` Entered: 10 October 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EIZO CORPORATION,
`Petitioner,
`
`v.
`
`BARCO N.V.,
`Patent Owner.
`
`
`Case IPR2014-00358
`Patent RE43,707 E
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, JAMES B. ARPIN, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge DESHPANDE.
`
`Opinion Concurring filed by Administrative Patent Judge McKONE.
`
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`Case IPR2014-00778
`Patent RE43,707 E
`
`
`
`I.
`
`INTRODUCTION
`
`Eizo Corporation (“Petitioner”) filed a corrected Petition (Paper 6,
`
`“Pet.”) requesting an inter partes review of claims 64–66, 68–76, 80, 85–88,
`
`91, 98–100, and 116–129 of U.S. Patent No. RE43,707 E (Ex. 1001, “the
`
`’707 patent”). Subsequently, Petitioner filed a Motion for Joinder (Paper 11,
`
`“Mot.”), seeking to join this proceeding with Eizo Corp. v. Barco N.V., Case
`
`IPR2014-00358 (PTAB) (“the ʼ358 proceeding”). Patent Owner filed an
`
`Opposition (Paper 12, “Opp.”) to Petitioner’s Motion for Joinder. Petitioner
`
`submitted a Reply (Paper 16, “Reply”) to Patent Owner’s Opposition to
`
`Petitioner’s Motion for Joinder. For the reasons that follow, Petitioner’s
`
`Motion for Joinder is denied. As a result of this denial, separately, we deny
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`inter partes review, as requested in the corrected Petition, as time-barred
`
`under 35 U.S.C. § 315(b). Paper 18, 3–4.
`
`II.
`
`LEGAL STANDARDS
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29 (2011),
`
`permits joinder of like review proceedings. Thus, an inter partes review
`
`may be joined with another inter partes review. The statutory provision
`
`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c),
`
`which provides:
`
`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
`
`
`
`2
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`
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`Case IPR2014-00778
`Patent RE43,707 E
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`
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`(emphasis added).
`
`As the movant, Petitioner bears the burden to show that joinder is
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`appropriate. 37 C.F.R. § 42.20(c). We also consider that the Board’s rules
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`for AIA proceedings “shall be construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); see
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (Aug. 14,
`
`2012).
`
`III. ANALYSIS
`
`As discussed further below, Petitioner’s argument and evidence are
`
`insufficient to persuade us to exercise our discretion to join the instant
`
`Petition and the ʼ358 proceeding. In its Motion for Joinder, Petitioner
`
`contends that joinder is appropriate because: (1) “it will be more efficient to
`
`conduct the inter partes review [of this proceeding and the ʼ358 proceeding]
`
`as part of a single proceeding;” (2) “there is no discernible prejudice to
`
`either party;” and (3) “Petitioner has been diligent and timely in filing the
`
`motion [for joinder] and Second Petition.” Mot. 7–9.
`
`1. Efficiency
`
`Petitioner argues that both the instant Petition and the ʼ358 proceeding
`
`include “the same patent, the same parties, common claim limitations and
`
`common prior art” and, therefore, granting joinder will be more efficient for
`
`the Board and both parties. Id. 7–8. Petitioner further identifies common
`
`
`
`3
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`Case IPR2014-00778
`Patent RE43,707 E
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`claim limitations between “[e]very single claim in the Second Petition and
`
`every single claim being reviewed in IPR2014-00358.” Reply 2–3.
`
`Patent Owner argues, however, that the instant Petition “raises
`
`numerous substantive issues that are not before the Board in Case IPR2014-
`
`00358.” Opp. 6–8. Specifically, Patent Owner argues that the instant
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`Petition raises different issues than those in the ʼ358 proceeding because it:
`
`“(1) challenges thirty-five new claims (claims 64–66, 68–76, 80, 85–88, 91,
`
`98–100, and 116–129); (2) asserts eleven new grounds of unpatentability;
`
`and (3) asserts nine prior art references, only two of which are at issue in the
`
`existing proceeding.” Id. at 6.
`
`We are not persuaded by Petitioner that granting joinder between the
`
`instant Petition and the ʼ358 proceeding will increase efficiency. We agree
`
`with Patent Owner that the instant Petition challenges claims not present in
`
`the ʼ358 proceeding and asserts several new grounds of unpatentability. We
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`also agree with Patent Owner that the instant Petition includes several prior
`
`art references that were not considered in our Institution Decision for the
`
`ʼ358 proceeding. Although Petitioner contends that several claim limitations
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`overlap between the instant Petition and the ʼ358 proceeding, we determine
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`that the number of new claims challenged, the number of new asserted
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`grounds of unpatentability, and the number of new prior art references will
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`complicate the case and decrease, rather than increase, the efficiency of the
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`proceedings, if joined.
`
`
`
`4
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`Case IPR2014-00778
`Patent RE43,707 E
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`2. Prejudice to Parties
`
`Petitioner argues that the instant Petition and the ʼ358 proceeding
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`involve many of the same prior art references, similar claim limitations, and
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`the same number of issues; and, therefore, the parties are not prejudice by
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`joining the two proceedings. Mot. 8–9. We are not persuaded by this
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`argument for the same reasons discussed above with respect to efficiency.
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`3. Diligent and Timely in Filing
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`Petitioner argues that it has been diligent and timely in filing the
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`instant Petition and the Motion for Joinder because the instant Petition
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`challenges claims that “only became subject to a potential inter partes
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`review when they issued in the Reexamination Certificate,” and Petitioner
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`“prepared and filed the Second Petition less than two months after the issue
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`date of the Reexamination Certificate and within four months of the filing
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`date of the First Petition.” Mot. 9. Patent Owner argues, however, that
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`Petitioner waited over sixteen months to file the instant Petition and
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`Petitioner filed several other proceedings prior to filing the instant Petition
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`and, therefore, Petitioner was not diligent and timely. Opp. 8–9.
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`We determine that Petitioner was timely in filing its Motion for
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`Joinder. 37 C.F.R. § 42.122(b). However, we need not decide whether
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`Petitioner was diligent and timely in filing the instant Petition in order to
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`decide Petitioner’s Motion for Joinder. Even if we consider Petitioner to
`
`have been diligent and timely in filing the instant Petition and the Motion for
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`Joinder, in view of our discussion in the preceding and following Sections of
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`
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`5
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`Case IPR2014-00778
`Patent RE43,707 E
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`this Decision, we are not persuaded that this diligence and timeliness is
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`sufficient evidence to grant the Motion for Joinder.
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`4. Impact on the ʼ358 Proceeding Schedule
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`Patent Owner argues that Petitioner has not addressed the impact of
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`joinder on the ʼ358 proceeding’s schedule. Opp. 11. Specifically, Patent
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`Owner argues that DUE DATE 1 for Patent Owner’s Response is set for
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`October 14, 2014, and joinder would impact this date unfairly. Id. We
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`agree with Patent Owner. Petitioner has not addressed the impact to DUE
`
`DATE 1 or the ripple effect of any change in DUE DATE 1 on the other due
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`dates in the ’358 proceeding. Even if Petitioner offered to stipulate to an
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`extension of the due dates due to joinder, it is not clear how this could be
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`accomplished in such a way that the significantly more complicated joined
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`proceedings could be completed, on a compressed schedule, within the time
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`frame established by the Scheduling Order in the ’358 proceeding.
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`Furthermore, although the ʼ358 proceeding schedule may be adjusted for
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`good cause shown, Petitioner has not demonstrated good cause for the Board
`
`to make any adjustments to the ʼ358 proceeding schedule, much less to
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`extend the period for completing the ’358 proceeding beyond one year from
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`its institution. See 35 U.S.C. § 316(a)(11). Accordingly, we are not
`
`persuaded that granting joinder would not unduly impact the ʼ358
`
`proceeding schedule.
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`5. CONCLUSION
`
`Under 35 U.S.C. § 315(c), we exercise our discretion to deny joinder.
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`
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`6
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`Case IPR2014-00778
`Patent RE43,707 E
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`6. ORDER
`
`
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s Motion for Joinder is denied.
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`7
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`Case IPR2014-00778
`Patent RE43,707 E
`
`McKONE, Administrative Patent Judge, concurring.
`
`
`
`I concur in the majority’s decision to deny joinder, including its
`
`determination that Petitioner has not shown that joinder would further the
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`just, speedy, and inexpensive resolution of either proceeding. For the
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`reasons set forth in Target Corp. v. Destination Maternity Corp., Case
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`IPR2014-00508 (PTAB Sept. 25, 2014) (Paper 18), however, it is my view
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`that, regardless of the merits of Petitioner’s Motion, 35 U.S.C. § 315(c) does
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`not permit the joinder of a party to a proceeding in which it already is a
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`party. Accordingly, I would deny Petitioner’s Motion for Joinder as
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`impermissible under § 315(c).
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`
`
`FOR PETITIONER:
`
`Marc Weinstein
`marcweinstein@quinnemanuel.com
`
`FOR PATENT OWNER:
`
`Kerry Hartman
`khartman@hartmanpatents.com
`
`Jeffrey Morgan
`Jeff.morgan@btlaw.com
`
`
`
`
`8
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`
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