PTAB Denies Joinder To Settled IPR

by | Feb 6, 2023 | Joinder, PTAB News, PTAB Trial Basics, Trial Institution

By David Linden and Dave Maiorana –

On September 1, 2022, CommScope, Inc. (“CommScope”) filed a Petition for inter partes review (“IPR”) of claims 8–10, 15, 24–26, and 31 of U.S. Patent No. 8,462,835 (“the ’835 Patent”) in IPR2022-01443 (“the ’443 IPR”).  The ’835 Patent is assigned to TQ Delta, LLC (“TQ Delta”) and involves evaluating the impact of impulse noise on a communication system and using that evaluation to determine a configuration of the system that adapts to impulse noise events.  CommScope concurrently filed a Motion for Joinder, requesting that it be joined to IPR2022-00471 (“the ’471 IPR”), filed by Nokia of America Corp. (“Nokia”) in January 2022.

The Petition filed by CommScope in September was, by CommScope’s admission, a “copycat” petition setting forth “the exact same grounds” as those set forth in Nokia’s petition in the ’471 IPR.  Nokia similarly acknowledged that its petition in the ’471 IPR was duplicative of a petition filed by CommScope in IPR2022-00352 (“the ’352 IPR) on December 31, 2021, which challenged the same claims of the ’835 patent.  The PTAB had denied institution of the ’352 IPR under 35 U.S.C. § 315(b), which precludes IPRs from issuing “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”  Prior to filing its first petition in the ’352 IPR, CommScope had acquired telecommunications equipment company 2Wire.  2Wire was a time-barred entity and the acquisition rendered it a real party-in-interest (“RPI”) and a privy, invoking Section 315(b).

The PTAB noted that CommScope’s request to join the ’471 IPR was an attempt to avoid the statutory time bar set forth in Section 315(b), albeit one within the rules if the Motion for Joinder was granted.  However, the parties to the ’471 IPR had settled the dispute subsequent to CommScope’s petition in the ’443 IPR but prior to the present Institution Decision, and the PTAB had terminated the IPR based on its policy goal of fostering settlements.  The PTAB thus summarily dismissed CommScope’s Motion for Joinder, noting that there is no pending proceeding in that IPR for them to join.

Regarding the ’471 IPR without the aid of joinder, the PTAB further rebutted CommScope’s characterization that the Board “discretionarily denied” institution of CommScope’s earlier ’352 IPR.  The PTAB noted that denial under 315(b) is not discretionary, but is mandated by statute upon certain findings—in that case, the acquisition of a time-barred RPI.  The PTAB set forth an equally straightforward denial of CommScope’s petition under 35 U.S.C 315(b), citing “the same reasons” the petition of identical substance in the ’352 IPR was denied institution.

Takeaway

Parties to a post-grant proceeding should anticipate possible strategic decisions of parties in related or implicated cases.  For example, settlement of a proceeding cited in a Motion for Joinder could result in denial of a concurrently filed petition.

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David Maiorana

Partner at Jones Day
Dave Maiorana is a trial lawyer with a notable combination of significant experience as a United States Patent and Trademark Office (USPTO) Examiner and more than 25 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the International Trade Commission (ITC). Dave has experience in diverse technology areas, including e-cigarettes, teeth whitening, diapers, fem care, antibodies, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.