Kyocera v. Softview (IPR2013-00004, Paper 15): Authorizing a Third Party's Motion for Joinder

Joinder lets a new petitioner enter an inter partes review already under way. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, entered April 24, 2013, deals with the step before joinder: getting the Board’s permission to file the motion at all. The patent was U.S. Patent 7,831,926, and the order also applied to the related proceeding IPR2013-00007.

Background

The Board instituted review in both IPR2013-00004 and IPR2013-00007 on March 29, 2013. On April 19, Apple, which was not a party, asked by email for a conference call to seek authorization to file motions for joinder. It planned to file them with new petitions of its own by April 29, 2013. That was one month after institution, the outside limit for a joinder motion under 37 C.F.R. § 42.122(b).

On the April 23 call, Apple made several points:

• The Board had stayed reexamination proceedings Apple had started on the patents, so joinder was its only way to take part in their review.
• The petitioner relied on a declaration from Apple’s own expert, and Apple needed to take part in any cross-examination of that expert.
• Apple would agree to shortened schedules, although it had not discussed this with the patent owner.
• It would raise only a limited number of new issues.

Kyocera did not oppose leave to file but reserved the right to oppose the motions, especially if they would significantly affect the schedule. Softview opposed. It argued that joinder would let Apple evade the one-year bar of 37 C.F.R. § 42.101(b), since Apple had been sued for infringement long before.

What the Board decided

The Board noted that joinder is discretionary under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), and that the rules are construed to secure the “just, speedy, and inexpensive resolution” of every proceeding (37 C.F.R. § 42.1(b)). It identified the costs of joinder:

• If Apple’s petitions raised grounds not already instituted, they would trigger time for a patent owner preliminary response and a further institution decision, which could delay the existing trials.
• Joinder would add cost, because more briefs and papers would need review.

The Board authorized Apple to file its motions for joinder with its petitions, subject to conditions. Each motion had to:

• explain why joinder was appropriate;
• identify any new ground of unpatentability raised in the accompanying petition;
• explain how the impact on the schedule and cost of the existing proceeding would be minimized; and
• specifically address how briefing and discovery could be simplified.

Kyocera and Softview had one week after filing to oppose. Apple was not authorized to file a reply. The Board stressed that the order only authorized filing and was not a decision on the merits of joinder.

Why it matters

The order shows the Board’s gatekeeping on motions. Under 37 C.F.R. § 42.20(b), a motion generally needs prior authorization, and the call gives the Board a chance to set conditions. Here the conditions previewed what the Board would weigh on the merits: new grounds, schedule and cost. A party seeking joinder benefits from addressing those points directly and proposing concrete ways to streamline briefing and discovery. Joinder also adjusts the trial’s time limits; see discovery and the one-year time period.

Softview’s time-bar objection reflects a recurring tension. The final sentence of 35 U.S.C. § 315(b) exempts joinder requests from the one-year bar. The question is how far that exemption should reach.

Later developments

The Board’s approach to joinder developed over the following years, including through Proppant Express v. Oren Technologies. In Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir. 2020), the Federal Circuit held that § 315(c) allows joinder of a person as a party but does not allow joining new issues into an existing proceeding, nor joining a party to a proceeding it is already in. A party facing the one-year bar, as Softview said Apple was, can therefore still be joined an instituted IPR, but under that holding it could not use joinder to bring in new grounds. Compare same-party joinder in Microsoft v. Proxyconn. Readers should check current Board practice.

Key takeaways

• Apple, a non-party, received leave to file motions for joinder in two instituted IPRs.
• Joinder motions are due within one month of institution under § 42.122(b), and joinder is discretionary under § 315(c).
• The Board required Apple to identify new grounds and explain how schedule and cost effects would be minimized.
• Windy City (2020) later held that § 315(c) does not permit joinder of new issues.