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.
In Microsoft, a first petition IPR2012-00026 was filed within the 12 month window to challenge claims 1,3, 10-12, 14 and 22-24 of the Proxyconn patent. Thereafter, and at a time outside of the 12 month window, Proxyconn added 6 claims uncovered by the first IPR petition to the parallel litigation. It may be that the claims were added late to the litigation to stave of a motion to stay pending the IPR (i.e., arguing the case would still need to proceed to trial regardless of the IPR outcome). After adding these 6 claims to the litigation Proxyconn decided to reverse course and join in the defendants request to stay the litigation, agreed to expedite the exiting IPR (waive their preliminary response), and to cooperate in seeking joinder of a second IPR filed by Microsoft targeting the added claims (IPR2013 -0109). It appears this violent change in tactics was due to the stipulation by all defendants to be bound by the results of the IPR (and likely Proxyconn’s view that they are going to win) (stipulation here)
The PTAB agreed to join the proceedings explaining that:
The same patents and parties are involved in both proceedings. There is an overlap in the cited prior art. There is no discernible prejudice to either party. Petitioner has been diligent and timely in filing the motion. And while some adjustments to the schedule have been necessary, there is not undue delay. In sum, the relevant factors of which we are aware all weigh in favor of granting this motion.
As a common troll tactic is to delay identification of claims for trial as late as possible in a litigation, this development is a positive for petitioners up against a 12 month deadline.