Kyocera Corp. v. Softview LLC

Paper 15, April 24, 2013

IPR2013-00004 (Patent 7,831,926)

[Third parties may request authorization to file a motion for joinder to an instituted IPR. If authorized, the motion must address how the impact of the joinder on the current proceedings may be minimized.]

FACTS

Third party Apple, Inc. requested in a conference call authorization to file a motion for joinder to the already instituted IPRs involving Petitioner Kyocera, Inc. and Patent Owner Softview LLC (IPR2013-00004 and IPR2013-00007). Patent Owner opposed the authorization while Petitioner did not.

HOLDING

The Board authorized Apple to file its motion for joinder and authorized Patent Owner and Petitioner to file any opposition to the motion. The Board noted that the decision to authorize joinder is discretionary and that it may be granted where joinder would facilitate the just, speedy, and inexpensive resolution of the proceeding. 37 C.F.R. 42.1(b). The Board instructed Apple to explain in its motion why joinder would be appropriate, to identify any new grounds of unpatentability that Apple is raising in its concurrently filed IPR petition, to explain how joinder would impact the schedule and costs of the current proceedings, and to identify how briefing and discovery may be simplified to minimize this impact. The Board authorized Petitioner and Patent Owner to file any opposition to the Motion within a week from the Motion’s filing date.

TAKEAWAY

The Board may authorize a third party to file a motion for joinder to the existing IPR concurrently with filing its own corresponding IPR petition. If the Board authorizes filing a motion for joinder, the movant must address in its motion how joinder would impact the schedule and costs of the instituted proceeding and how this impact may be minimized.

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