Joinder Motions Opposed by Patent Owner and Petitioner

Authored by Michelle Carniaux

For the first time, motions for joinder are being opposed by both the affected patent owner and an IPR petitioner. Trials were initiated in connection with IPR2013-00004 and 13-00007 on March 29, 2013 (same patent owner, Softview LLC, and the same petitioner, Kyocera Corporation). Exactly one month after the trials were initiated, a third party to the foregoing IPR trials, Motorola Mobility, filed two petitions for IPR. Kyocera and Motorola Mobility are defendants in patent litigations brought by Softview on these same patents.

In IPR2013-00257 and 13-00256, Motorola Mobility requested joinder with IPR2013-00004, and 13-00007, respectively, alleging, among other things, (1) that its IPR petitions are based on the same grounds and same combinations of prior art as that submitted by the petitioner in IPR2013-00004 and 13-00007, respectively, and (2) Inter Parte Reexaminations previously filed by Motorola Mobility on the same patents were stayed in view of IPR2013-00004 and 13-00007. On May 13, 2013, both Softview and Kyocera filed oppositions to the joinder motions. It is expected that the PTAB will act relatively quickly on the joinder motions if they are leaning toward granting the motions. In the event that the PTAB denies the motions for joinder, it is likely that the PTAB will find that Motorola Mobility’s IPR petitions are time barred, since their petitions were filed more than one year after being served with an infringement complained based on the same two patents.