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.