Joinder practice at the Patent Trial & Appeal Board (PTAB) provides strategic opportunities for members of Joint Defense Groups (JDG). JDGs are especially common in patent troll assertions. Petitions from JDG co-defendants for joinder of an ongoing post grant patentability trial (i.e., IPR, PGR or CBM) that are filed within one month of trial institution and do not raise substantial issues beyond those presented in the previously granted petition, or those that simply file a copy of the previously granted petition, are likely to be liberally granted. Such joinder practice enables JDG co-defendants to actively participate in the ongoing post grant proceeding before the PTAB. As can be appreciated, through joinder, individual joint defense group members can secure the opportunity to participate in a proceeding they would otherwise have no control over, or no recourse should the original petitioner decide to settle.
Interestingly, the 12 month window of 35 U.S.C. § 315(b) that prevents defendants from pursuing an IPR beyond the 12 month anniversary of a service of complaint for patent infringement of a subject patent does not apply to joinder petitions (such as might typically be desired by JDG co-defendants). The legislative history on this exception is scant, but, the thinking seems to be that once a post grant patentability proceeding is seasonably initiated,the PTAB should be able to receive input from all interested parties.
Recently, in Microsoft Corp v. Proxyconn Inc. (IPR2013-00109, here) the PTAB has further clarified that joinder practice is not only a tool for “joinder of parties” to an existing post grant trial proceeding, but may also be leveraged to join together two proceedings of a same petitioner (as long as the first is seasonably presented). This “joinder of claims” practice may be especially helpful for those petitioners battling patent trolls. Read the rest of this entry »