By David Linden and Dave Maiorana –
On June 6, 2024, Shenzhen Waydoo Intelligence Technology Co., Ltd. (“Waydoo”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 9,359,044 (“the ’044 Patent”) (“IPR998”), assigned to MHL Custom, Inc. (“MHL”). Concurrently with its petition, Waydoo filed a motion for joinder seeking to join IPR998 to IPR2024-00086 (“the Foil Boarding IPR”), which also challenges the ’044 Patent and includes different real parties-in-interest. Waydoo noted that its petition is “intentionally identical to [the Foil Boarding IPR] in all substantive aspects.” On January 29, 2021, nearly three and a half years prior to filing the petition in IPR998, Waydoo was served in district court with a complaint alleging infringement of the ’044 Patent (“the Waydoo case”). In the Waydoo case, Waydoo unsuccessfully challenged the validity of the ’044 Patent and was held liable for willful infringement.
35 U.S.C. § 315(b) provides that a petition for IPR must be filed no later 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.” Importantly, however, the one-year time bar does not apply to requests for joinder. Whether institution of the IPR was granted thus hinged upon the PTAB’s consideration of the motion for joinder. Waydoo argued that the PTAB had “granted joinder motions under similar circumstances.” It cited Cisco v. Centripetal, IPR2022-01151 (PTAB Jan. 4, 2023) (“Cisco”) and Code200 v. Bright Data, IPR2022-00861 (PTAB Oct. 19, 2022) (“Code200 II”), each of which resulted in institution.
But the PTAB distinguished the facts of Cisco and Code200 II from those of IPR998. For example, in Cisco, the Federal Circuit vacated the district court’s determination of validity and infringement and remanded the case to a new judge, who was directed to “decide the case without regard for” the vacated opinion. The Federal Circuit did not vacate the jury’s verdict from the Waydoo case. Furthermore, the petitioner in Cisco filed a Sotera stipulation submitting not to pursue in a district court litigation the same grounds or any grounds that could have reasonably been raised before the PTAB. In contrast, Waydoo could not make a Sotera stipulation, as it had already challenged the ’044 Patent based on two of the primary references relied upon in the IPR998 petition.
Nor were the facts of IPR998 like those of Code200 II, reasoned the PTAB. In Code200 II, the PTAB found that the petition presented compelling evidence of unpatentability based on prior art references that were not considered by the jury in the prior litigation. Moreover, in that case joinder was necessary for the PTAB to consider the merits of the unpatentability challenges, as the petitioner from the IPR Code200 sought to join had been dismissed.
Instead, the PTAB submitted that IPR998 was most analogous to Code200 v. Bright Data Ltd., IPR2021-01503 (PTAB Mar. 14, 2022) (“Code200 I”), cited by MHL. In Code200 I, the petitioner (“UAB Teso”) filed a petition challenging a patent, along with a motion for joinder, more than a year after it was sued for infringing the same patent. In the lawsuit, UAB Teso counterclaimed that the patent was invalid. Both the lawsuit and invalidity counterclaims were dismissed with prejudice. In Code200 I, the PTAB reasoned that granting the motion would undermine the integrity of the judicial process and denied the motion. The PTAB similarly found that granting institution in IPR998 would be contrary to the interests of justice, finding persuasive MHL’s argument that Waydoo had “already had its day in court and lost.” The PTAB denied institution, emphasizing that Congress intended for IPRs “to be an alternative—not an addition—to district court litigation.”
Takeaway
Petitioners should comply with statutory deadlines. A failure to do so may preclude the institution of an IPR, even where the PTAB considers discretionary avenues for institution.
David Maiorana
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