News & Analysis as of

PTAB Allows Petitioner to Join Its Own Previously Filed Inter Partes Review

In Target Corp. v. Destination Maternity Corp., IPR2014-00508, the Patent Trial and Appeal Board (PTAB) granted Target Corporation’s Request for Rehearing on its previously denied Motion for Joinder, and ultimately granted...more

Joinder of defendants in apportionable claims: a question of justice

A recent Western Australian Court of Appeal case demonstrates the circumstances in which a court will join a prospective defendant in an apportionable claim. In Hart v JGC Accounting & Financial Services Pty Ltd...more

Joinder Denied: The Ins And Outs Of Filing And Joining IPR Petitions On A Timely Basis

For patent infringement defendants filing an Inter Partes Review (“IPR”) petition to challenge the validity of the patents asserted against them has become popular, largely because of the high rate of patents rendered invalid...more

IPR Motions for Joinder are Common, But Not Automatic

Recent statistics show that motions for joinder are granted about 60% of the time. While parties can, therefore, expect a sympathetic ear regarding these motions, they are not always successful and it is worth noting the...more

No Joinder Without Proof That Grounds Could Not Have Been Raised Previously

Reloaded Games, Inc. v. Parallel Networks LLC - Addressing the issue of joinder to an already instituted inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board)...more

Patent Filings, Institution Decisions, and Dispostitions for November 20, 2014

New Filings - Zetec, Inc. filed IPR2015-00280 challenging U.S. Patent No. 6,823,269, assigned to Westinghouse Electric Co LLC....more

Insitution Decisions and Dispositions for November 19, 2014

Institution Decisions - In Advanced Micro Devices, Inc.. v. Zond, LLC, IPR 2014-01072, Paper 11 (November 19, 2014), the Board instituted inter partes review of claims 16, 28, 41, 42, 45, and 46 of U.S. Patent No....more

Waiver of Florida Spousal Homestead Rights by Deed Upheld

A recent Florida appellate decision finds that the joinder of a spouse on a deed of homestead property to a trust constitutes a valid waiver of homestead rights, even though the deed contains no waiver language....more

Divided PTAB Panel Denies Issue Joinder as a Matter of Law

Target Corp. v. Destination Maternity Corp. - Interpreting the statutory provision regarding the one-year time limitation and joinder of parties, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board...more

Patent Filings and Institution Decisions for November 7, 2014

New Filings - 2Wire Inc. filed IPR2015-00239 challenging U.S. Patent No, 7,471,721 assigned to TQ Delta, LLC....more

IPR Joinder, While Common, is Not a Matter of Right

In IPR2014-00702, the Board denied Petitioner’s Motion for Joinder with a similar proceeding (IPR2014-00057), in a case styled as Unified Patents, Inc. v. PersonalWeb Technologies, LLC & Level 3 Communications, involving US...more

Patent Filings and Institution Decisions for October 24, 2014

New Filings - Agila Specialties Inc., filed IPR2015-00144, challenging U.S. Patent No. 8, 058,238 owned by the Royal Bank of Canada....more

Institution Decisions for October 23, 2014

Institution Decision - In Mercedes-Benz USA, LLC v. American Vehicular Sciences LLC, IPR2014-00647, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 10, 11, 15, 16, 17, 19, 20, and 23 of...more

Institution and Joinder Decisions for October 17, 2014

Institution Decisions - In First Data Corporation v. Cardsoft (Assignment for the Benefit of Creditors), LLC, IPR2014-00715, Paper 9, IPR2014-00720, Paper 8 (October 17, 2014), the Board denied inter partes review as...more

Institution Decisions, Dispositions, and Joinder Motions for October 16, 2014

Institution Decisions - In United States Endoscopy Group, Inc. v. CDx Diagnostics, Inc., IPR2014-00642, Paper 7 (October 16, 2014), the Board instituted inter partes review of claims 1-39 of U.S. Patent No. 6,258,044...more

Federal Circuit Decision Highlights Risk of Co-owning Patents

Co-owning any piece of property can lead to unwanted and unexpected headaches. And as demonstrated by the Federal Circuit in STC.UNM v. Intel Corp., Fed. Cir. No. 2013-1241, this is especially true with respect to...more

Joinder — Split decisions on the Same Day are Revealing

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00858, Paper 13 (October 2, 2014), the Board granted Fujitsu’s motion to join the proceeding with prior IPR2014-00803....more

Board Uses its Discretion to Duck Joinder Question

In Microsoft Corporation v. Enfish, LLC, IPR2014-00574, Paper 13, IPR2014-00576, Paper 13, IPR2014-00577, Paper 13 (September 29, 2014), the Board denied Microsoft’s request to join the petition, with one of the prior inter...more

Possibility of Joinder Does Not Justify Making the Patent Owner Respond Early

In SkyHawke Technologies, LLC v. L and H Concepts, L.L.C., IPR2014-01485, Paper 6 (September 30, 2014), the petitioner submitted a request for joinder of the proceeding with IPR214-00438 that it previously filed, also...more

IP Newsflash - October 2014

Federal Circuit Affirms Inequitable Conduct Based On “Intentionally Selective” Disclosure - On September 26, 2014, a divided Federal Circuit panel affirmed the unenforceability of three American Calcar patents,...more

Federal Circuit Affirms Dismissal Where Co-Owner of Patent Refuses to Join Suit

The Federal Circuit recently denied en banc review of its prior decision dismissing a patent infringement suit where a co-owner of the patent-in-suit refused to join the case voluntarily and the court held that it could not...more

Joinder of insurers – Belcastro v Gabriel Nakhl

The potential savings in legal costs often warrant resisting the direct joinder of an insurer, notwithstanding the relatively low bar set by the authorities. In Belcastro v Gabriel Nakhl & Ors [2014] NSWSC 1305 the insurers...more

IPR Proceedings Filed Eight Months Apart Is Too Long to Permit Joinder

In the Macronix International Co., Ltd. et al. v. Spansion LLC, the PTAB denied Petitioner's motion for joinder under Section 315(c). On November 8, 2013, the Petitioner filed a petition for inter partes review of U.S. Patent...more

Make That First Bite A Big One

In Medtronic, Inc. v. Marital Deduction Trust, IPR2014-00695, Paper 18 (September 25, 2014), the Board denied Medtronic’s motion to join the IPR with a prior IPR 2014-00100, also involving U.S. Patent No. 5,593,417. The...more

The Board’s Disjointed View of Joinder

In Target Corporation v. Destination Maternity, IPR2014-00508, Paper 20 IPR2014-00509, Paper 19 (September 25, 2014), the Board denied the petitions as barred under 35 USC 315(b),finding that Target could not “join” its later...more

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