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) denied a petitioner's motion for joinder of a second petition involving the same parties and patent as previously instituted, finding that petitioner failed to explain why the joinder issues could not have been addressed in the prior petition. Reloaded Games, Inc. v. Parallel Networks LLC, Case No. IPR2014-00950 (PTAB, Oct. 22, 2014) (Jung, APJ).
The petitioner, Reloaded Games, filed a petition to institute IPR of a patent at issue in an already instituted IPR. The petition was filed within one month after the other IPR was instituted and involved the same parties and patent. The second petition was filed more than one year after the petitioner was served with a complaint alleging infringement of the patent. However, the one-year bar under 35 U.S.C. § 315(b) does not apply to a request for joinder. The petitioner argued that its request for joinder was appropriate because the second petition involved the same parties, raised a limited number of additional issues, would not complicate the already instituted IPR and was directed to issues that would already be resolved. The patent owner, Parallel Networks, argued that the petitioner had not raised any ground of unpatentability that could not have been raised when filing the original petition, and that petitioner merely sought a "second bite of the apple."
The PTAB agreed with the patent owner, explaining, "[j]oinder may be authorized when warranted, but the decision to grant joinder is discretionary. . . . When exercising that discretion, the Board is mindful that patent trial regulations, including the rules for joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding." After noting that "Petitioner's Motion for Joinder does not explain why [newly added] citations could not have been added to the prior Petition," the PTAB concluded that joinder was not justified.
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