throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: June 9, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBALFOUNDRIES U.S. INC.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Cases IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`____________
`
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge ARBES.
`
`Opinion Concurring-in-Part, Dissenting-in-Part filed by Administrative
`Patent Judge FITZPATRICK.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Granting Petitioner’s Motions for Joinder
`37 C.F.R. § 42.122
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`
`Petitioner GlobalFoundries U.S. Inc. filed two Petitions requesting
`
`inter partes review of claims 1–12 and 14–18 (“the challenged claims”) of
`
`U.S. Patent No. 7,126,174 B2 (Ex. 1001, “the ’174 patent”)1 and a Motion
`
`for Joinder with Case IPR2016-01246 in each proceeding. Patent Owner
`
`Godo Kaisha IP Bridge 1 filed a Combined Opposition to Petitioner’s
`
`Motion for Joinder and Preliminary Response and Petitioner filed a Reply in
`
`each proceeding, as listed in the following chart.
`
`Case Number
`
`Challenged
`Claims
`
`Petition Motion
`for
`Joinder
`
`Reply
`
`Combined
`Opposition
`and
`Preliminary
`Response
`
`IPR2017-00925 1–3, 5–7,
`9–12, and
`14–18
`
`Paper 2
`(“Pet.”)
`
`Paper 3
`(“Mot.”)
`
`Paper 8
`(“Opp.”)
`
`Paper 12
`(“Reply”)
`
`IPR2017-00926 1, 4, 5,
`8–12, 14,
`and 16
`
`Paper 1
`(“-926
`Pet.”)
`
`Paper 3
`(“-926
`Mot.”)
`
`Paper 8
`
`
`Paper 11
`
`Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter
`
`partes review unless the information in the petition and preliminary response
`
`“shows that there is a reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challenged in the petition.” For the
`
`reasons that follow, we institute an inter partes review as to claims 1–12 and
`
`14–18 of the ’174 patent on certain grounds of unpatentability, and grant
`
`Petitioner’s Motions for Joinder.
`
`
`1 References to exhibits herein are to those filed in Case IPR2017-00925.
`Petitioner’s original Reply in each proceeding exceeded the five-page limit
`set forth in 37 C.F.R. § 42.24(c)(2). On April 17, 2017, we authorized
`Petitioner by email to re-file its Replies and expunged the original versions.
`See IPR2017-00925, Papers 10–12; IPR2017-00926, Papers 10, 11.
`
`
`
`2
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`
`I. BACKGROUND
`
`A. Related Proceedings
`
`On June 24, 2016, Taiwan Semiconductor Manufacturing Company,
`
`Ltd. (“TSMC”) filed two petitions, in Case IPR2016-01246 (“the -1246
`
`Case”) and Case IPR2016-01247 (“the -1247 Case”), requesting inter partes
`
`review of the challenged claims of the ’174 patent. On January 4, 2017, we
`
`instituted an inter partes review on all of the asserted grounds, and exercised
`
`our authority under 35 U.S.C. § 315(d) to consolidate the two proceedings
`
`and conduct the proceedings as one trial, with papers being filed in the
`
`-1246 Case. Taiwan Semiconductor Mfg. Co., Ltd. v. Godo Kaisha IP
`
`Bridge 1, Case IPR2016-01246 (PTAB Jan. 4, 2017) (Paper 8) (“-1246 Dec.
`
`on Inst.”). Patent Owner filed its Response on March 24, 2017.
`
`On February 3, 2017, GlobalFoundries, Inc. (Petitioner’s corporate
`
`parent) filed two petitions in Cases IPR2017-00849 and IPR2017-00850
`
`requesting inter partes review of the challenged claims based on the same
`
`asserted grounds as the petitions in the -1246 and -1247 Cases, along with
`
`Motions for Joinder. The petitions listed GlobalFoundries, Inc. as the sole
`
`real party-in-interest. See, e.g., IPR2017-00849, Paper 2, 70. Petitioner
`
`subsequently filed its Petitions and Motions for Joinder2 in the instant
`
`proceedings on February 17, 2017, listing itself and GlobalFoundries, Inc.
`
`as real parties-in-interest. See Pet. 88; -926 Pet. 75. On March 10, 2017,
`
`we dismissed the petitions in Cases IPR2017-00849 and IPR2017-00850.
`
`See, e.g., IPR2017-00849, Paper 12.
`
`
`2 In its Motion for Joinder filed in Case IPR2017-00926, Petitioner requests
`joinder with the -1247 Case. -926 Mot. 1. As explained above, however, we
`consolidated the -1247 Case with the -1246 Case. Thus, we understand the
`Motion to apply to the consolidated proceeding.
`
`
`
`3
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`
`B. The Prior Art
`
`Petitioner relies on the following prior art:
`
`U.S. Patent No. 4,506,434, issued Mar. 26, 1985
`(Ex. 1010, “Ogawa”);
`
`U.S. Patent No. 5,021,353,
`(Ex. 1017, “Lowrey”);
`
`issued June 4, 1991
`
`U.S. Patent No. 5,153,145, issued Oct. 6, 1992 (Ex. 1002,
`“Lee”); and
`
`U.S. Patent No. 5,539,229, filed Dec. 28, 1994, issued
`July 23, 1996 (Ex. 1015, “Noble”).
`
`
`
`C. The Asserted Grounds
`
`Petitioner challenges claims 1–12 and 14–18 of the ’174 patent as
`
`unpatentable under 35 U.S.C. § 103(a)3 on the following grounds:
`
`Case Number
`
`References
`
`Claims Challenged
`
`IPR2017-00925
`
`Lee and Noble
`
`1–3, 5–7, 9–12, and 14–18
`
`IPR2017-00925
`
`Lee and Ogawa
`
`1–3, 5–7, 9–12, and 14–18
`
`IPR2017-00926
`
`Lowrey and Noble
`
`1, 4, 5, 8–12, 14, and 16
`
`IPR2017-00926
`
`Lowrey and Ogawa
`
`1, 4, 5, 8–12, 14, and 16
`
`
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’174 patent have an effective filing date before the effective date of
`the applicable AIA amendment, we refer to the pre-AIA version of
`35 U.S.C. § 103.
`
`
`
`4
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`
`II. DISCUSSION
`
`A. The Petitions
`
`Petitioner asserts the same grounds of unpatentability as those on
`
`which we instituted a trial in the -1246 Case. See Pet. 17; -926 Pet. 16–17;
`
`-1246 Dec. on Inst. 29. Petitioner’s arguments are identical to the arguments
`
`made by TSMC in its petitions. Compare Pet. 10–88, with IPR2016-01246,
`
`Paper 2, 10–85; compare -926 Pet. 10–75, with IPR2016-01247, Paper 2,
`
`10–76; see also Mot. 3 (arguing that the Petitions “include[] grounds that are
`
`essentially the same as the grounds instituted” in the -1246 Case); Reply 2
`
`(arguing that “Petitioner’s arguments regarding the asserted prior art
`
`references are identical to the arguments made by” TSMC, and Petitioner
`
`relies on the same declaration as TSMC in the -1246 Case). Patent Owner
`
`does not argue the merits of Petitioner’s asserted grounds in its Combined
`
`Opposition and Preliminary Response in each proceeding. We incorporate
`
`our previous analysis regarding the asserted grounds of unpatentability, and
`
`conclude that Petitioner has demonstrated a reasonable likelihood of
`
`prevailing on the grounds of unpatentability asserted in the Petitions for the
`
`same reasons. See -1246 Dec. on Inst. 7–28.
`
`
`
`B. The Motions for Joinder
`
`The AIA created administrative trial proceedings, including inter
`
`partes review, as an efficient, streamlined, and cost-effective alternative to
`
`district court litigation. 35 U.S.C. § 315(c) provides (emphasis added):
`
`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`
`
`
`5
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`“Any request for joinder must be filed, as a motion under § 42.22, no later
`
`than one month after the institution date of any inter partes review for which
`
`joinder is requested.” 37 C.F.R. § 42.122(b). Joinder may be authorized
`
`when warranted, but the decision to grant joinder is discretionary. See
`
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board determines whether to
`
`grant joinder on a case-by-case basis, taking into account the particular facts
`
`of each case, substantive and procedural issues, and other considerations.
`
`See Sony Corp. of Am. v. Network-1 Security Solutions, Inc., Case
`
`IPR2013-00495, slip op. at 3 (PTAB Sept. 16, 2013) (Paper 13) (“Sony”).
`
`When exercising its 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. See 35 U.S.C.
`
`§ 316(b); 37 C.F.R. § 42.1(b).
`
`As the moving party, Petitioner has the burden of proof in establishing
`
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`
`A motion for joinder should (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new ground(s) of unpatentability asserted in the
`
`petition; and (3) explain what impact (if any) joinder would have on the trial
`
`schedule for the existing review. See Sony, at 3; Mot. 4. Petitioner should
`
`address specifically how briefing and/or discovery may be simplified to
`
`minimize schedule impact. See Kyocera Corp. v. SoftView LLC, Case
`
`IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15)
`
`(representative); Mot. 4.
`
`
`
`
`
`6
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`
`1. Timeliness of the Motions for Joinder
`
`Patent Owner argues that the Motions for Joinder should be denied as
`
`untimely under 37 C.F.R. § 42.122(b), which specifies that “[a]ny request
`
`for joinder must be filed, as a motion under § 42.22, no later than one month
`
`after the institution date of any inter partes review for which joinder is
`
`requested.” Opp. 2–5. We instituted an inter partes review in the -1246
`
`Case on January 4, 2017, and Petitioner filed its Motions for Joinder in the
`
`instant proceedings on February 17, 2017. Thus, the Motions were filed
`
`after the one-month period set forth in 37 C.F.R. § 42.122(b). Under
`
`37 C.F.R. § 42.5(b), however, the Board “may waive or suspend a
`
`requirement of [part 42 of the Board’s rules] and may place conditions on
`
`the waiver or suspension.” Patent Owner argues that there is no reason why
`
`Petitioner could not have filed its Motions within one month of institution in
`
`the -1246 Case, particularly given the fact that it filed nearly identical
`
`petitions within one month in Cases IPR2017-00849 and IPR2017-00850.
`
`Opp. 2–4. Petitioner responds that special circumstances exist to waive the
`
`one-month requirement. Reply 3–4. We agree with Petitioner.
`
`Similar to the situation in Sony, where the petitioner filed a first
`
`petition and motion for joinder within the one-month period that was denied,
`
`and then a second petition and motion for joinder after the one-month period
`
`that was granted, here Petitioner’s parent company filed its petitions in
`
`Cases IPR2017-00849 and IPR2017-00850 within one month of institution
`
`in the -1246 Case, then Petitioner re-filed shortly thereafter to include both
`
`entities as real parties-in-interest. See Sony, at 6–9. Also similar to the facts
`
`of Sony and explained further below, Petitioner’s “asserted grounds and
`
`arguments are identical to those already at issue in the existing proceeding,
`
`
`
`7
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`joinder would require no change to the trial schedule, [and] joinder would
`
`impose no added burden on the existing parties because [Petitioner is]
`
`willing to have only a limited ‘understudy’ role.” See id. at 9. Thus, we are
`
`persuaded to exercise our discretion to waive the one-month requirement
`
`under 37 C.F.R. § 42.122(b), and turn to whether joinder should be granted,
`
`taking into account substantive, procedural, and other considerations.
`
`
`
`2. Substantive Issues
`
`Petitioner argues that joinder with the -1246 Case is appropriate
`
`because its asserted grounds and supporting evidence are “essentially the
`
`same” as that of the -1246 Case. See Mot. 1; Reply 2. Patent Owner does
`
`not dispute that the asserted grounds and evidence are identical to those on
`
`which a trial was instituted in the -1246 Case. We agree with Petitioner that
`
`the Petitions raise no new issues beyond those already before us in the
`
`existing proceeding, which weighs in favor of joinder.
`
`Patent Owner argues that Petitioner’s actions “raise questions” as to
`
`whether it identified correctly all real parties-in-interest in these
`
`proceedings. Opp. 10–13. Specifically, GlobalFoundries, Inc. filed the
`
`original petitions in Cases IPR2017-00849 and IPR2017-00850, identifying
`
`itself as the only real party-in-interest, but Petitioner now identifies both
`
`itself and GlobalFoundries, Inc. Id. at 10–12. Patent Owner also points to a
`
`statement made by Petitioner in a related case that “the Petition had been
`
`timely filed because it was filed less than one year after the date [Broadcom
`
`Ltd. (‘Broadcom’)] was served with both the summons and the complaint.”
`
`Id. at 12 (citing IPR2017-00903, Paper 2, 87–88). We are not persuaded that
`
`Petitioner’s identification of an additional real party-in-interest in the instant
`
`
`
`8
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`proceedings would raise significant new issues beyond those already at issue
`
`in the -1246 Case. Nor are we persuaded by Patent Owner’s citation to the
`
`statement regarding Broadcom, because Petitioner did not in fact identify
`
`Broadcom as a real party-in-interest in that proceeding. See
`
`IPR2017-00903, Paper 2, 86–88. Given the similarities in substantive issues
`
`between the instant proceedings and the -1246 Case, we conclude that the
`
`impact of joinder on the existing proceeding would be minimal.4
`
`
`
`3. Procedural Issues
`
`Petitioner argues that because the asserted grounds and supporting
`
`evidence mirror what was presented in the -1246 Case, “joinder would not
`
`affect the pending schedule in [the -1246 Case] nor increase the complexity
`
`of that proceeding, minimizing costs.” Mot. 1; see Reply 2–3. Petitioner
`
`further states that it “is willing to act as an ‘understudy’ to TSMC, only
`
`assuming an active role in the event TSMC settles with” Patent Owner.
`
`Mot. 1; see Reply 3. Specifically, Petitioner
`
`proposes that as long as TSMC remains in the joined IPR,
`[Petitioner] agrees to remain in a circumscribed “understudy”
`role without a separate opportunity to actively participate.
`Thus, [Petitioner] will not file additional written submissions,
`nor will [Petitioner] pose questions at depositions or argue at
`oral hearing without the prior permission of TSMC. Only in
`the event that TSMC settles will [Petitioner] seek to become
`active in the joined IPR.
`
`Mot. 5; see also Reply 5 (“Petitioner is willing to abide by such additional
`
`conditions as the Board deems appropriate.”). Because joinder would
`
`require no change to the existing trial schedule and Petitioner agrees to have
`
`4 To the extent Patent Owner believes any additional briefing is necessary in
`the -1246 Case, Patent Owner may request a conference call.
`
`
`
`9
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`only a limited “understudy” role if joined, the procedural impact of joinder
`
`on the -1246 Case would be minimal, which weighs in favor of joinder.
`
`Patent Owner argues that permitting joinder “would frustrate the
`
`possibility of settlement” with TSMC in the -1246 Case, as “[n]either Patent
`
`Owner nor TSMC would have an incentive to simplify and streamline the
`
`IPR issues via settlement if [Petitioner] looms in the background.” Opp. 5.
`
`The possible chilling effect of joinder on settlement is a factor present in
`
`most, if not all, joinder situations, and must be weighed together with all of
`
`the other facts. We are persuaded that the similarities in issues, lack of any
`
`impact on the existing trial schedule, and fact that Petitioner consents to
`
`procedural protections that will maintain TSMC’s control over the
`
`proceeding outweigh any potential effect on settlement.
`
`Patent Owner also argues that, if joinder is granted, we should impose
`
`additional conditions on Petitioner’s participation in the -1246 Case. Opp.
`
`13–15. Much of what Patent Owner requests is already stated in Petitioner’s
`
`proposal above. We agree with Patent Owner, though, that given its
`
`“understudy” role, Petitioner should be permitted to file papers, engage in
`
`discovery, and participate in depositions and oral argument only after
`
`obtaining authorization from the Board, not TSMC. See id. at 13–14.
`
`Petitioner may request a conference call to obtain such authorization if
`
`necessary.
`
`
`
`4. Conclusion
`
`Based on all of the considerations above, we are persuaded that
`
`Petitioner has met its burden of demonstrating that joinder is warranted
`
`under the circumstances. Petitioner will have a limited role in the -1246
`
`
`
`10
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`Case, as explained below. If at some point the -1246 Case is terminated
`
`with respect to TSMC, the role of any remaining party or parties in the
`
`proceeding will be reevaluated.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`III. ORDER
`
`ORDERED that an inter partes review is instituted as to claims
`
`1–12 and 14–18 of the ’174 patent;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’174 patent is hereby instituted commencing on the
`
`entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;
`
`FURTHER ORDERED that the trial is limited to the following
`
`grounds of unpatentability, and no other grounds as to claims 1–12 and
`
`14–18 of the ’174 patent are authorized:
`
`Claims 1–3, 5–7, 9–12, and 14–18 under 35 U.S.C. § 103(a) as
`
`unpatentable over Lee and Noble;
`
`Claims 1–3, 5–7, 9–12, and 14–18 under 35 U.S.C. § 103(a) as
`
`unpatentable over Lee and Ogawa;
`
`Claims 1, 4, 5, 8–12, 14, and 16 under 35 U.S.C. § 103(a) as
`
`unpatentable over Lowrey and Noble; and
`
`Claims 1, 4, 5, 8–12, 14, and 16 under 35 U.S.C. § 103(a) as
`
`unpatentable over Lowrey and Ogawa;
`
`FURTHER ORDERED that Petitioner’s Motions for Joinder with
`
`Case IPR2016-01246 are granted, and GlobalFoundries U.S. Inc. is joined
`
`as a party to Case IPR2016-01246;
`
`
`
`11
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`
`FURTHER ORDERED that Cases IPR2017-00925 and
`
`IPR2017-00926 are instituted, joined, and terminated under 37 C.F.R.
`
`§ 42.72, and all further filings in the joined proceeding shall be made in
`
`Case IPR2016-01246;
`
`FURTHER ORDERED that unless given prior authorization by the
`
`Board, Petitioner is not permitted to file papers, engage in discovery, or
`
`participate in any deposition or oral argument in Case IPR2016-01246.
`
`Petitioner, however, is permitted to appear in Case IPR2016-01246 so that it
`
`receives notification of filings and may attend depositions and oral
`
`argument.5 Should Petitioner believe it necessary to take any further action,
`
`Petitioner should request a conference call to obtain authorization from the
`
`Board; and
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the file of Case IPR2016-01246.
`
`
`
`
`5 Counsel for TSMC and Petitioner should refer to the Board’s website for
`information regarding filings in the Patent Trial and Appeal Board End to
`End (PTAB E2E) system.
`
`
`
`12
`
`

`

`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBALFOUNDRIES U.S. INC.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Cases IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`____________
`
`
`
`
`FITZPATRICK, Administrative Patent Judge, concurring-in-part,
`dissenting-in-part.
`
`I concur with the majority’s decision to join GlobalFoundries U.S.
`
`Inc. (“Global”) as co-petitioner in the previously instituted inter partes
`
`review (Case IPR2016-01246). I dissent from the remainder of the
`
`majority’s decision, including the decision to grant the Motions for Joinder
`
`and to “institute[], join[], and terminate[]” Cases IPR2017-00925 and
`
`IPR2017-00926.
`
`I. The Motions For Joinder Should Not Be Granted
`
`The Motions for Joinder seek “joinder” of Global-petitioned inter
`
`partes reviews with Case IPR2016-01246. See, e.g., IPR2017-00925,
`
`Paper 3, 6 (“Global respectfully requests that its Petition for Inter Partes
`
`
`
`1
`
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`Review of U.S. Patent No. 7,126,174 B1 be granted and that the proceedings
`
`be joined with Taiwan Semiconductor Manufacturing Company Limited
`
`(“TSMC”) v. Godo Kaisha IP Bridge 1, Case No. IPR2016-01246. Joinder
`
`will ensure a just, speedy and inexpensive resolution in both proceedings.”).
`
`But, the statutory sub-section under which Global seeks relief, 35 U.S.C.
`
`§ 315(c), does not permit joining an inter partes review to another inter
`
`partes review. Id.; but cf. id. § 315(d) (referring to “consolidation” of a
`
`pending inter partes review and “another proceeding or matter involving the
`
`patent”). Section 315(c) refers to joining, rather, a “person” “as a party” to
`
`an instituted inter partes review. It states the following:
`
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`35 U.S.C. § 315(c) (emphasis added). Hence, although I concur in the
`
`decision to join Global as co-petitioner in Case IPR2016-01246, I do not
`
`agree with the majority’s decision to grant the Motions for Joinder, which
`
`seek relief not authorized by § 315(c) and not properly labeled “joinder.”
`
`II. The Petitions Should Not Be Granted
`
`Granting a second (or third) petition for an inter partes review is not
`
`necessary to grant joinder. 35 U.S.C. § 315(c). As a prerequisite to joining
`
`a person as a party to an instituted inter partes review, the statute requires
`
`
`
`2
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`us—as the Director’s delegates6—to determine that the person to be joined
`
`has properly filed a petition that “warrants the institution of an inter partes
`
`review.” Granting the person’s petition, however, is not a prerequisite to
`
`granting the person’s request for joinder.
`
`And, “a petition to institute an inter partes review” (35 U.S.C.
`
`§ 311(a)) is distinct from “a request for joinder” (35 U.S.C. § 315(b)). In
`
`fact, although “[a]n inter partes review may not be instituted 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,” that petitioner may still be
`
`joined to an instituted an inter partes review (if one exists) that was filed by
`
`a different petitioner. 35 U.S.C. § 315(b).
`
`As the majority notes supra, the Petitions before us collectively
`
`present the same grounds of unpatentability as those on which we instituted
`
`trial in Case IPR2016-01246 (as consolidated with Case IPR2016-01247).
`
`I would deny the Petition under 35 U.S.C. § 325(d). The majority implicitly
`
`recognizes that additional inter partes reviews based on the Petitions would
`
`be duplicative of Case IPR2016-01246 and, thus, it terminates the inter
`
`partes reviews that it institutes. But, the majority does not explain the legal
`
`basis for terminating them. Clearly, Cases IPR2017-00925 and IPR2017-
`
`00926 are not being terminated under 35 U.S.C. § 317. Nor is a final written
`
`decision being entered pursuant to 35 U.S.C. § 318.
`
`
`6 Although § 325(d) refers only to determinations by “the Director,” the
`Director has delegated institution authority to the Board. See 37 C.F.R.
`§ 42.4(a).
`
`
`
`3
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`
`I concur with the majority’s decision to join Global as co-petitioner in
`
`Case IPR2016-01246, but I would not grant Global’s Motions for Joinder or
`
`its Petitions.
`
`
`
`
`
`
`
`
`
`4
`
`

`

`IPR2017-00925 and IPR2017-00926
`Patent 7,126,174 B2
`
`PETITIONER:
`
`Kent Cooper
`LAW OFFICE OF KENT J. COOPER
`kent.cooper@kjcooperlaw.com
`
`Adam Floyd
`DORSEY & WHITNEY LLP
`floyd.adam@dorsey.com
`
`
`PATENT OWNER:
`
`Neil F. Greenblum
`Michael J. Fink
`Arnold Turk
`GREENBLUM & BERNSTEIN, P.L.C.
`ngreenblum@gbpatent.com
`mfink@gbpatent.com
`aturk@gbpatent.com
`
`
`
`
`5
`
`

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