Microsoft v. Proxyconn (IPR2013-00109, Paper 15): Joining a Petitioner's Second IPR

Joinder lets the Board combine a new inter partes review petition with a trial already under way. Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, entered February 25, 2013, is an early grant of joinder in which the same petitioner was, in effect, joined to its own earlier proceeding.

The trial it joined is covered in the notes on the institution decision in IPR2012-00026 and the later discovery ruling in the joined case.

Background

Microsoft’s first petition, IPR2012-00026, had been instituted on several claims of U.S. Patent 6,757,717. Microsoft then learned that Proxyconn was asserting additional claims in their district court litigation. It filed a second petition on those claims together with a motion for joinder under 37 C.F.R. § 42.122(b). Proxyconn did not oppose; it encouraged joinder. In a separate decision entered the same day, the Board instituted review on the second petition as to all claims.

The timing mattered. Microsoft had been served with an infringement complaint more than one year before filing the second petition. Under 35 U.S.C. § 315(b), that would ordinarily bar the petition. The final sentence of § 315(b), however, says the time limit does not apply to a request for joinder under § 315(c).

What the Board decided

The Board granted joinder. Because Proxyconn did not oppose Microsoft’s statement of material facts, those facts stood as admitted under 37 C.F.R. § 42.24(b). The Board added its own findings:

• both proceedings involved the same parties and the same patent;
• the Yohe reference was cited in both;
• neither party would be prejudiced;
• Microsoft acted promptly once it learned of the newly asserted claims;
• the motion was timely because it was filed with the second petition;
• a revised scheduling order would avoid undue delay; and
• joinder would serve the “just, speedy, and inexpensive resolution” goal of 37 C.F.R. § 42.1(b).

Quoting § 315(c), the Board explained that the Director may join as a party “any person” who properly files a petition that warrants institution. It recognized that, without joinder, the second petition would have been time-barred, and that joinder allows the one-year deadline for a final decision to be adjusted under § 316(a)(11).

The Board ordered that IPR2013-00109 be joined with IPR2012-00026, terminated the second case under 37 C.F.R. § 42.72, directed all further filings to IPR2012-00026, and changed the caption to show both case numbers.

Why it matters

The decision illustrates the mechanics of joinder that still apply:

• A joinder motion accompanies a petition. The petition must itself warrant institution.
• Timing under § 42.122(b). A joinder motion must be filed no later than one month after institution of the IPR to be joined.
• Factors the Board weighs include overlap of parties, patents and prior art, prejudice, diligence and effect on the schedule.

What has changed is the use of joinder by the same petitioner to add claims or grounds beyond the one-year bar.

Later developments

In Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir. 2020), the Federal Circuit held that § 315(c) does not authorize joining a person to a proceeding in which it is already a party, and does not allow new issues to be joined into an existing proceeding. That holding rejects the approach used here and the Board’s earlier precedential view in Proppant Express v. Oren Technologies. A different party may still seek joinder, as Apple did in Kyocera v. Softview. Readers should check current Board practice on joinder.

The joined trial itself ended in a final written decision reviewed in Microsoft Corp. v. Proxyconn, Inc. (Fed. Cir. 2015).

Key takeaways

• The Board joined Microsoft’s second petition to its own pending IPR on the same patent.
• The § 315(b) one-year bar did not apply because the petition came with a joinder request.
• The Board weighed overlap, prejudice, diligence and schedule under § 42.1(b).
• Since Windy City (2020), same-party joinder and joinder of new issues are not permitted under § 315(c).