Patent Owner Failed to Justify Joining Five IPR’s


In Ford Motor Co. v. Cruise Control Technologies LLC, IPR2014-0281, Paper 19, (July 2, 2014) the Board denied patent owner’s motion to join five proceedings U.S. Patent No. 6,324,463.  The Board ducked the question of whether proceedings could be joined before they were instituted, finding that in any event the patent owner failed to justify joinder.

As the moving party, the patent owner had the burden of proof to establish that it is entitled to joinder of the five subject proceedings. 37 C.F.R. § 42.20(c) (2013), and the Board was not persuaded that joinder would reduce, in any material manner, the burden placed upon Patent Owner in defending the validity of the ’463 patent before the Board. The Board noted that the Patent Owner will still have to defend against the same number of parties and prepare briefs addressing the same grounds.  The Board said that the patent owner “presents no credible evidence or argument in support of its statement that five separate proceedings “means five of everything at five times the cost” versus one joined proceeding which would involve the same substantive issues as the five separate proceedings. The alleged discovery burdens imposed by five separate proceedings can be alleviated substantially by entering the same schedule in each case, in conjunction with cooperation between the parties and motion practice in the event of disputes — which is no different than what would happen in one joined proceeding.

The Board agreed with Petitioner that Patent Owner invited a multi-front battle concerning the validity of the ’463 patent when it filed fifteen separate infringement lawsuits.

Finally the Board was not persuaded that  joinder in the present case, whether before or after institution of trials, materially would benefit the Board, noting that the same three-Judge panel has been assigned to each of the five subject proceedings.



Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Harness, Dickey & Pierce, PLC | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.