Microsoft, Inc. v. Proxyconn, Inc.

Paper 15, February 25, 2013

IPR2013-00109 (TLG) (Patent 6,757,717 B1)

[The Board may grant joinder if it would facilitate just and speedy resolution of the proceedings.

One-year time bar does not apply to a request for joinder.]

FACTS

Petitioner Microsoft Corporation filed a petition for an IPR and requested it to be joined with the already instituted proceeding involving the same patent and parties (IPR2012-00026). Patent Owner Proxyconn did not oppose.

HOLDING

The Board granted Petitioner’s motion for joiner. The Board noted that pursuant to 35 U.S.C. § 315(c), the Director has discretion to join a petitioning party to an instituted IPR, and that the rules governing post-grant proceedings are to be construed so as to ensure the just, speedy, and inexpensive resolution. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48758 (Aug. 14, 2012). The Board determined that in this case this goal would be served by granting joinder because both IPR proceedings involved the same parties and patent, overlapping prior art, motion was filed timely, and the joiner would not lead to an undue delay or prejudice to either party.

The Board also noted that because this petition was filed more than a year after the Petitioner was served with a complaint alleging infringement of the patent at issue, it would be time barred absent joinder. However, pursuant to 35 U.S.C. § 315(b), one-year time bar does not apply to a request for joinder.

TAKEAWAY

The Board may grant a motion for joinder if it finds that joinder would facilitate just, speedy, and inexpensive resolution of the proceedings. One-year time bar does not apply to a request for joinder.

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