Authored by A. Antony Pfeffer
NetApp, Inc. was served with a complaint alleging infringement of U.S. Patent 5,978,791 on December 6, 2011, but did not file an IPR within one year. However, an IPR on this same patent had been filed by EMC Corporation and VMware Inc (IPR2013-0082), and trial was instituted on May 17, 2013. NetApp then filed an IPR (IPR2013-0319) on May 30, 2013 along with a motion for Joinder to the -0082 IPR. This IPR was similar to the earlier -0082 IPR but added an additional claim to the IPR (claim 35). According to the motion for joinder:
the NetApp Petition presents the same grounds for unpatentability, the same prior art references, and the same technical analysis for claim 35 as that already presenting in the EMC IPR for claim 4. The NetApp Petition also utilizes the same expert declarant, Douglas W. Clark, Ph.D. Therefore, the Patent Owner’s response in a joined proceeding would not require substantial cost or analysis beyond what is already required to undertake to respond to the EMC IPR.
On July 22, 2013, in an opinion by APJ Chang, the PTAB denied the motion for joinder. A decision on the petition itself will be addressed in a separate decision. See IPR 2013-00319, No. 18 (P.T.A.B. July 22, 2013).
In denying joinder, the PTAB first noted that the addition of claim 35 to the IPR “clearly presents new unpatentability analysis and substantive issues” beyond those in the -0082 IPR, and that NetApp did not adequately address the impacts of those new substantive issues on the -0082 IPR. The PTAB agreed with the Patent Owner that these new issues could extend the schedule of the -0082 IPR trial by up to six months. Further complicating joinder in this case is the fact that there were five related IPRs ongoing between EMC and the Patent Owner and discovery in those IPRs had been coordinated into a synchronized schedule. Thus, the PTAB noted that:
The time set forth in 37 C.F.R. § 42.100(c) can be extended by up to six months for good cause or adjusted by the Board in the case of joinder. However a good cause showing has not been provided for the five related inter partes reviews.
Finally, while denying the motion for joinder, the PTAB rejected the Patent Owner’s arguments that the petition was untimely as filed more than one year after NetApp was served with a complaint, noting that this ignores the last sentence of 35 U.S.C. §315(b).
This decision notes that in situations where the later petition by a third party is identical to an earlier petition, joinder is more likely to be granted (as no new issues will be raised). However, it remains to be seen how liberally the PTAB will grant joinder by third parties, and how frequently the discretion under 37 C.F.R. §42.100(c) to allow for a longer trial period will be exercised.
As noted earlier, a decision on the petition itself, now that joinder has been denied, will be forthcoming. It remains to be seen whether this later decision will further analyze the implications of the time limits of 35 U.S.C. §315 in situations where joinder is denied and the petition is filed more than one year after a complaint was served.