Paper 17
`Trials@uspto.gov
`571-272-7822 Entered: July 25, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CODE200, UAB; TESO LT, UAB; METACLUSTER LT,
`UAB;OXYSALES, UAB; AND CORETECH LT, UAB,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`IPR2022-00861
`Patent 10,257,319 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 25, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CODE200, UAB; TESO LT, UAB; METACLUSTER LT,
`UAB;OXYSALES, UAB; AND CORETECH LT, UAB,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`Patent Owner.
`____________
`
`IPR2022-00861
`Patent 10,257,319 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges
`
`McSHANE, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`
`I. INTRODUCTION
`Code200, UAB, Teso LT, UAB, Metacluster LT, UAB, Oxysales,
`UAB, and Coretech LT, UAB (“Petitioner” or “Code200”) filed a Petition
`for inter partes review of claims 1, 2, 12, 14, 15, 17–19, and 21–29 of U.S.
`Patent No. 10,257,319 B2 (Ex. 1001, “the ’319 patent”). Paper 1 (“Pet.”).
`Patent Owner filed a Preliminary Response. Paper 15 (“Prelim. Resp.”).
`With the Petition, Petitioner also filed a Motion for Joinder with NetNut Ltd.
`v. Bright Data Ltd., IPR2021-01492 (“the 1492 IPR” ). Paper 7 (“Mot.”).
`Bright Data Ltd. (“Patent Owner”) filed an Opposition to the Motion for
`Joinder. Paper 11 (“Opp.”). Petitioner filed a Reply to Patent Owner’s
`Opposition. Paper 13 (“Reply”).
`We have authority under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Under 35 U.S.C. § 315(b), “[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.” Section 315(b) further provides that “[t]he time
`limitation set forth in the preceding sentence shall not apply to a request for
`joinder under subsection (c).” Additionally, under 35 U.S.C. § 315(c), “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 . . . determines warrants the institution of an inter partes review
`under section 314.”
`
`2
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`
`For the reasons described below, we do not institute an inter partes
`review of the challenged claims and we deny Petitioner’s Motion for
`Joinder.
`
`II. RELATED PROCEEDINGS
`The ’319 patent has been the subject of numerous proceedings in
`district court and the Board. We summarize these proceedings below.
`A. Teso Litigation
`The parties indicate that there are several related district court
`litigations involving the ’319 patent, including, most particularly, Bright
`Data Ltd. v. Teso LT, UAB, 2:19-cv-00395-JRG (E.D. Tex.) (“the Teso
`litigation”). Pet. 3; Mot. 2; Paper 16 (Updated Mandatory Notices), 3. In
`the Teso litigation, Bright Data Ltd., the Patent Owner here, sued
`defendants, Teso LT, UAB, Metacluster LT, UAB, Oxysales, UAB, and
`Coretech LT, UAB, some of the petitioner group here, for infringement of
`the ’319 patent, as well as U.S. Patent Nos. 10,484,510 and 10,469,614.
`Mot. 2. In the Teso litigation, a jury trial was conducted, and the issue of
`whether claims 1 and 26 of the ’319 patent were invalid in view of the
`Crowds reference asserted here (see infra) was presented by the defendants.
`Id. The jury found that that the defendants did not prove that these claims
`were invalid by clear and convincing evidence. Id.
`B. 1266 IPR
`The parties identify IPR2020-01266 (“the previously-filed 1266
`IPR”), filed by Petitioner, which challenged certain claims of the ’319
`patent. Mot. 3; Paper 16, 1; Opp. 8. The previously-filed 1266 IPR was
`denied on discretionary grounds. Mot. 3.
`
`3
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`C. ’319 Patent Reexamination
`The parties also indicate that the ’319 patent is the subject of an ex
`parte reexamination, Control No. 90/014,875, which has been stayed. Mot.
`5; Paper 16, 2.
`D. 1492 IPR
`In the 1492 IPR, the case to which Petitioner is seeking joinder, we
`instituted an inter partes review of claims 1, 2, 12, 14, 15, 17–19, and 21–29
`of the ’319 patent on the following grounds:
`
`35 U.S.C. §
`1021
`103
`
`Claim(s)
`1, 19, 21–29
`1, 2, 14, 15, 17–19,
`21–29
`1, 12, 14, 21, 22, 24,
`25, 27– 29
`1, 12, 14, 15, 17–19,
`21, 22, 24, 25, 27–29 103
`1, 17, 19, 21–29
`103
`1, 2, 14, 15, 17–19,
`103
`21–29
`
`103
`
`References/Basis
`Crowds2
`Crowds, RFC 26163
`
`Border4
`
`Border, RFC 2616
`MorphMix5
`MorphMix, RFC 2616
`
`
`1 Because the application from which the ’319 patent issued has an earliest
`effective filing date before March 16, 2013 (Ex. 1001, (60)), citations to 35
`U.S.C. §§ 102 and 103 are to the pre-AIA versions. Leahy-Smith America
`Invents Act (“AIA”), Pub. L. No. 112-29.
`2 Michael Reiter & Aviel Rubin, Crowds: Anonymity for Web Transactions,
`ACM Transactions on Information and System Security, Vol. 1, No. 1 (Nov.
`1998) (Ex. 1006, “Crowds”).
`3 Hypertext Transfer Protocol–HTTP/1.1, Network Working Group, RFC
`2616, The Internet Society, 1999 (Ex. 1013, “RFC 2616”).
`4 U.S. Patent No. 6,795,848 B1 (Sep. 21, 2004) (Ex. 1012, “Border”).
`5 Marc Rennhard, MorphMix – A Peer-to-Peer-based System for Anonymous
`Internet Access (2004) (Ex. 1008, “MorphMix”).
`4
`
`
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`IPR2022-00861
`Patent 10,257,319 B2
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`NetNut Ltd. v. Bright Data Ltd., IPR2021-01492, Paper 12 at 7–8, 39 (PTAB
`Mar. 21, 2022) (“1492 Decision” or “1492 Dec.”).
`
`Patent Owner settled with NetNut in the 1492 IPR, and NetNut has
`been terminated as Petitioner in that action. 1492 IPR, Paper 20.
`E. 1109 IPR
`There is also a newly-filed petition pending in IPR2022-01109, which
`challenges claims of the ’319 patent based on Plamondon (“the 1109 IPR”),
`filed by Petitioner. Code200, UAB v. Bright Data Ltd., IPR2022-01109,
`Paper 1, 9. In the 1109 IPR, Petitioner seeks joinder with previously-
`instituted case IPR2022-00135 (“the 135 IPR”), which was filed by The
`Data Company Technologies Inc. Id., Paper 7. The Board has not yet
`determined whether to grant institution and joinder in the 1109 IPR.
`
`F. 135 IPR
`
`In the 135 IPR, The Data Company Technologies Inc. filed a petition
`challenging certain claims of the ’319 patent based on Plamondon. As
`noted, institution was granted in the 135 IPR and Petitioner seeks to join it in
`the 1109 IPR.
`G. Major Data IPR
`There is also another pending inter partes review challenge to the
`’319 patent, filed by Major Data UAB, which also seeks joinder with the
`1492 IPR. Major Data UAB v. Bright Data Ltd., IPR2022-00915, Paper 3
`(PTAB April 21, 2022) (“the Major Data IPR”). No decision has been
`rendered on institution or the joinder motion in that case.
`
`
`
`5
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`III. DISCUSSION
`
`A. Background
`
`The Petition in this proceeding is a “me-too” petition asserting the
`
`same grounds of unpatentability as those upon which we instituted review in
`the 1492 IPR. Compare Pet. 2–3, with 1492 Dec. 7–8, 39. Consistent with
`this, Petitioner contends that the Petition is “is substantially identical to the
`petition in the NetNut IPR [1492 IPR] and contains the same grounds (based
`on the same prior art and supporting evidence) against the same claims, and
`differs only as necessary to reflect the fact that it is filed by a different
`petitioner.” Pet. 2 (citing Ex. 1022).
`Petitioner requests that we institute inter partes review for the same
`reasons we instituted review in the 1492 IPR and seeks joinder with that
`IPR. Mot. 1. Petitioner asserts that the request for joinder has been timely
`made. Id. at 6. Petitioner contends that the following factors identified in
`Kyocera Corp. v. Softview LLC favor joinder: (1) the reasons why joinder is
`appropriate; (2) whether the petition raises any new grounds of
`unpatentability; (3) any impact joinder would have on the cost and trial
`schedule for the existing review; and (4) whether joinder will add to the
`complexity of briefing or discovery. Id. at 6 (citing Kyocera Corp. v.
`Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)
`(“Kyocera”); Consolidated Trial Practice Guide 76 (Nov. 2019) (“TPG”)6).
`
`More specifically, when addressing the Teso litigation, where Crowds
`was considered, Petitioner argues that the Teso litigation concerned different
`claims, different prior art, and a different burden of proof compared to the
`
`
`6 Available at https://go.usa.gov/xpvPF.
`6
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`inter partes review sought to be joined. Mot. 6–9. Petitioner also asserts
`that the jury in the Teso litigation did not have the benefit of the district
`court’s Supplemental Claim Construction Order, (Ex. 1020), which is
`available here and which “the Board found persuasive” in the 1492 IPR. Id.
`at 9. Petitioner contends further that the Teso litigation has been stayed and,
`if and when the stay is lifted, the defendants intend to file post-judgment
`motions. Id. at 3.
`Petitioner also argues that the joinder motion is “routine,” and the
`Board “often grants motions for joinder in view of pending litigations
`involving the same patent and the same parties,” as is the case here. Mot. 9–
`10; Reply 1. Petitioner refers to its previously-denied petition in the 1266
`IPR that challenged claims of the ’319 patent, and asserts that because the
`previous denial was on a discretionary basis, and therefore did not reach the
`merits, this should not weigh against joinder here. Mot. 12; Reply 2–3
`(citing Intel Corp. v. VLSI Tech. LLC, IPR2022-00366, Paper 14, 9 (PTAB
`June 8, 2022) (“Intel”)7). Petitioner contends that it will assume an
`“understudy” role, and that joinder will not impact the trial schedule, or add
`to the cost, complexity of the briefing, or discovery of the joined proceeding.
`Mot. 14–15.
`Patent Owner opposes the Motion for Joinder. Patent Owner argues
`that the burden is on Petitioner to justify joinder and that burden has not
`been met. Opp. 1. Patent Owner contends that, absent joinder. the Petition
`would be time-barred under 35 U.S.C. § 315(b). Id. at 11. Patent Owner
`
`
`7 IPR2022-00366 has been joined with IPR2021-01064. Certain issues in
`the joined cases are the subject of Director review, but the issues under
`review are not related to joinder or any other issues we address herein.
`7
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`argues that it should be able to rely on the jury verdict against Petitioner in
`the Teso litigation, and that “Petitioner’s actions undermine the integrity of
`the judicial process.” Id.
`Additionally, Patent Owner contends that Patent Owner has settled its
`disputes with NetNut, and Petitioner should not be allowed to continue a
`proceeding that would otherwise be terminated. Opp. 2 (citing Apple Inc. v.
`Uniloc 2017 LLC, IPR2020-00854, Paper 9, 12 (PTAB Oct. 28, 2020)
`(precedential) (“Uniloc”)).
`
`B. Analysis
`
`For the reasons that follow, we deny institution under § 314(a).
`
`
`1. Other Challenges to the ’319 patent
`
`The grounds in this Petition substantially overlap the grounds in the
`previously-denied 1266 IPR, as well as with the grounds that are the basis of
`the instituted 1492 IPR. The petition in the previously-denied 1266 IPR
`relied on the following grounds:
`Claims Challenged
`35 U.S.C. §
`
`References
`
`1, 2, 21, 22, 24–27
`1, 2, 14, 15, 17, 18,
`21, 22, 24–27
`1, 12, 14, 21, 22, 24,
`25, 27–29
`1, 12, 14, 15, 17, 18,
`21, 22, 24–29
`1, 2, 17, 19, 21, 22,
`24–27
`1, 2, 14, 15, 17–19,
`21, 22, 24–27
`
`102(b)
`103(a)
`
`102(b)
`
`103(a)
`
`102(b)
`
`103(a)
`
`8
`
`Crowds
`Crowds, RFC 2616
`
`Border
`
`Border, RFC 2616
`
`MorphMix
`
`MorphMix, RFC 2616
`
`
`
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`1266 IPR, Paper 18 at 5.
`
`We note also that this is not a typical “me too” joinder request. Mot.
`13–15. Although Petitioner has agreed to an “understudy” role, NetNut, the
`petitioner in the 1492 IPR to be joined, has been terminated from that
`proceeding due to a settlement. 1492 IPR, Paper 20. Therefore, Petitioner
`would not be acting in the role of an understudy, but would immediately
`assume the leading role if joinder were granted. Prelim. Resp. 12; Opp. 14–
`15. Thus, if we granted joinder here, “Petitioner would stand in to continue
`a proceeding that would otherwise be terminated.” Uniloc, Paper 9 at 4. As
`a result, if we were to institute this case and grant joinder, Petitioner would
`be advancing substantially the same grounds it initially relied on in the 1266
`IPR, which was denied in 2020.
`
`In addition, Petitioner challenges claims 1–29 of the ’319 patent based
`on Plamondon in the 1109 IPR. 1109 IPR, Paper 1. The claims challenged
`in the 1109 IPR therefore also significantly overlap with the claims
`challenged here and those previously challenged in the 1266 IPR. See
`discussion supra.
`2. General Plastic
`
`
`Both parties present additional arguments under Fintiv and General
`Plastic in support of their respective positions. Pet. 12; Prelim. Resp. 4–24;
`Opp. 8–15; Reply 2–5 (citing Apple Inc. v. Fintiv Inc., IPR2020-00019,
`Paper 11 (PTAB March 20, 2020) (precedential) (“Fintiv”); General Plastic
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19
`(PTAB Sept. 6, 2017) (precedential as to § II.B.4.i) (“General Plastic”)).
`
`Under General Plastic, the Board may deny a petition based on the
`discretionary authority of § 314(a). General Plastic, Paper 19 at 15; see also
`
`9
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`Uniloc, Paper 9 at 4–5. In considering whether to grant joinder with the
`1492 IPR, we may also consider whether to exercise our discretion under 35
`U.S.C. § 314(a). Under 35 U.S.C. § 315(c), the statutory provision
`governing joinder, the discretion to join a party to an ongoing IPR is
`premised on the determination that the petition warrants institution under
`§ 314. This statutory provision reads:
`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.
`Further, “[t]o join a party to an instituted IPR, the plain language of § 315(c)
`requires two different decisions.” Facebook, Inc. v. Windy City Innovations,
`LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Thus, in applying § 315(c), we
`first “determine whether the joinder applicant’s petition for IPR ‘warrants’
`institution under § 314.” Id. Second, if the petition warrants institution, we
`then “decide whether to ‘join as a party’ the joinder applicant.” Id. For the
`reasons that follow, we are persuaded to exercise our discretion, under
`General Plastic, not to institute this proceeding.
`In General Plastic, the Board articulated a list of non-exclusive
`factors to be considered in determining whether to exercise discretion under
`§ 314(a) to deny a petition:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`
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`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision on
`whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed
`to the same claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review.
`General Plastic, Paper 19 at 16 (citing NVIDIA Corp. v. Samsung Elec. Co.,
`IPR2016-00134, Paper 9 at 6–7 (PTAB May 4, 2016)).
`
`Factor 1: “whether the same petitioner previously filed a
`petition directed to the same claims of the same patent”
`There are two other inter partes petitions that Petitioner has filed,
`
`besides this one, that challenge claims of the ’319 patent: the previously-
`denied 1266 IPR and the pending 1109 IPR, which we will discuss under
`factor 6 below.
`
`Patent Owner relies on Uniloc to argue that because Petitioner
`previously filed the 1266 IPR petition, which challenged the ’319 patent
`based on the same prior art asserted here, this favors denial of institution
`under factor 1. Opp. 2, 8. Petitioner asserts that because the 1266 IPR
`petition was not evaluated on the merits, and instead the denial was based on
`
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`discretionary grounds, Petitioner relies upon Intel to distinguish the Uniloc
`case, because it addressed a situation after denial of an earlier petition on the
`merits. Reply 2 (citing Intel, Paper 14 at 9).
`
`Although this case has some similarities with Intel, it differs on the
`issue of whether the petitioner had the benefit of the Board’s guidance on the
`use of stipulations that agree not to raise the grounds asserted in the IPR at
`trial. Intel, Paper 14 at 13–14; Prelim. Resp. 7–9. In Intel, the Board found
`that the decision denying the earlier petition occurred before the Board had
`expressed its approval of such stipulations in Sotera Wireless or Sand
`Revolution II. Id. However, as Patent Owner argues, the petition in the
`earlier 1266 petition was filed after Sand Revolution II had been designated
`informative. Prelim. Resp. 8. Unlike the petitioner in Intel, Petitioner here
`had the guidance provided by Sand Revolution II, and could have proffered
`such a stipulation, but did not do so. We determine that this failure to
`provide such a stipulation in the face of clear guidance from the Board
`weighs strongly in favor of exercising discretion to deny institution and
`outweighs the fact that the Board did not substantively address the merits of
`the prior petition.
`Accordingly, based on the record before us, we agree with Patent
`Owner (Opp. 8; Prelim. Resp. 7–8) that this General Plastic factor weighs in
`favor of exercising discretion to deny institution of the proceeding.
`
`Factor 3: “whether at the time of filing of the second petition
`the petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition”
`Patent Owner asserts that Petitioner had received Patent Owner’s
`preliminary responses and the Board’s institution decisions in the
`
`12
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`previously-filed 1266 IPR and in the 1492 IPR before the filing of this
`Petition. Id. at 8–9.
`General Plastic expresses concern over “road mapping,” that is,
`taking advantage of prior filings to obtain a “roadmap” of the opponent’s
`case. General Plastic, Paper 19 at 17. Patent Owner presents no evidence,
`however, that this Petition has been modified from the petition in the 1266
`IPR filed in 2020 based on information that became available in the
`subsequent preliminary response and decision in the 1492 IPR.
`Therefore, there is no evidence of road mapping and, thus, this third
`General Plastic factor does not weigh in favor of exercising discretion to
`deny institution of the proceeding.
`
`Factor 2: “whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second petition
`or should have known of it”
`
`Factor 4: “the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition”
`
`Factor 5: “whether the petitioner provides adequate
`explanation for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent”
`The Board considers these factors “to assess and weigh whether a
`petitioner should have or could have raised the new challenges earlier.”
`General Plastic, Paper 19 at 18. Based on the circumstances here, these
`factors have limited relevance. As discussed, the grounds in the previously-
`denied 1266 IPR substantially overlap with the grounds in this Petition, so
`there are no new challenges at issue here.
`
`13
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`Patent Owner argues that this Petition was filed 22 months after
`Petitioner had knowledge of the prior art references, and Petitioner filed the
`Petition just prior to the one-month deadline after institution in the 1492
`IPR. Opp. 9. While this is accurate, Petitioner’s actions, in large part,
`appear to be reasonably diligent under the circumstances. Petitioner could
`not have filed this Petition prior to the institution of the 1492 IPR. And
`because the asserted prior art is the same as the earlier-asserted art, we see
`no prejudice to Patent Owner due to the timing of the Petition.
`Accordingly, we determine that the second, fourth, and fifth General
`Plastic factors do not weigh in favor of exercising discretion to deny
`institution of the proceeding.
`
`Factor 6: “the finite resources of the Board”
`Patent Owner argues that the Board should not expend its finite
`resources on Petitioner’s multiple bites of the apple which include three
`IPRs, a reexamination, and a jury trial on the same prior art references. Opp.
`1, 9–10; Prelim. Resp. 4, n.1, 9–12.
`In addition to the previously-filed 1266 IPR, which we discuss above,
`Petitioner also has the pending petition in the 1109 IPR,8 filed on June 14,
`2022, which also challenges claims of the ’319 patent, including sole
`independent claim 1, but relies on Plamondon as the primary prior art.
`Code200, UAB v. Bright Data Ltd., IPR2022-01109, Paper 1, 3.
`The Board’s Consolidated Trial Practice Guide provides guidance on
`multiple petitions, including identifying circumstances where more than one
`
`
`8 We do not assess or suggest an outcome on the decision on institution and
`joinder motion in the pending 1109 IPR.
`14
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`petition may be necessary. TPG, 59. The Guide instructs the petitioner to
`provide a ranking between the petitions and provide information as to why
`the Board should exercise discretion to institute additional petitions. Id. 59–
`60. Here, Petitioner has not provided a ranking or rationale to support the
`need for multiple petitions. Accordingly, we have no guidance as to why we
`should expend the Board’s resources to potentially institute multiple
`proceedings by joining and instituting this case.
`Additionally, we consider efficiency relating to the Teso litigation.
`As discussed above, a jury verdict has already been reached in that litigation,
`and the issue of whether claims 1 and 26 of the ’319 patent are invalid in
`view of Crowds was before the jury. Mot. 2. We agree with Petitioner that
`there are some differences between the prior art and claims at issue here
`compared to those in the Teso litigation, and there are different burdens of
`proof. Mot. 6–9. Nonetheless, we agree with Patent Owner that institution
`and joinder would create significant risk of the Board redoing at least some
`of the work done in the litigation. Prelim. Resp. 15–16.
`Accordingly, we determine that the sixth General Plastic factor
`weighs strongly in favor of exercising discretion to deny institution of the
`proceeding.
`
`Factor 7: “the requirement under 35 U.S.C. § 316(a)(11) to
`issue a final determination not later than 1 year after the date
`on which the Director notices institution of review”
`Patent Owner argues that granting institution and joinder would have
`a negative effect on the trial schedule and create added complexity in the
`proceeding. Opp. 10.
`
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`We agree with Patent Owner that there would likely be a negative
`impact on the schedule in the 1492 IPR that would affect whether the one
`year deadline could be met. The 1492 IPR was instituted on March 21,
`2022, with oral argument set on December 16, 2022. 1492 IPR, Papers 12,
`13. If Petitioner is joined to that case, Petitioner has stated that the Board
`should “revisit scheduling for these proceedings after decisions on the
`joinder motions are made in the related proceedings.” Ex. 2009. Although
`Patent Owner agreed to accelerate some briefing in this case to allow
`consideration of institution and this joinder motion, this case still lags behind
`the 1492 IPR schedule by approximately four months. Paper 19. To adjust
`the schedule to accommodate joinder, the time to complete briefing would
`have to be significantly accelerated to issue a final determination within one
`year, which may not be possible. Additionally, notwithstanding that the one
`year statutory time period may be adjusted for a joined case under 35 U.S.C.
`§ 316(a)(11), granting institution and joinder in this case would
`unnecessarily delay this proceeding beyond the Board’s goal of a one-year
`pendency for all IPR proceedings.
`Accordingly, we determine that the seventh General Plastic factor
`weighs strongly in favor of exercising discretion to deny institution of the
`proceeding.
`
`3. Conclusion
`
`In light of the General Plastic factors, the guidance expressed in the
`Trial Practice Guide, and the arguments presented for and against the
`exercise of discretionary denial, we conclude that it is appropriate here to
`exercise our discretion under 35 U.S.C. § 314(a) to deny institution.
`
`16
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`
`IV. DENIAL OF MOTION FOR JOINDER
`As stated above, the Director may join a party to an ongoing IPR only
`if the filed petition warrants institution under § 314. 35 U.S.C. § 315(c).
`Because we exercise discretion to deny institution under § 314, we deny also
`Petitioner’s Motion for Joinder.
`
`V. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is
`denied; and
`FURTHER ORDERED that the Motion for Joinder is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`17
`
`
`
`IPR2022-00861
`Patent 10,257,319 B2
`
`PETITIONER:
`
`George “Jorde” Scott
`John Heuton
`CHARHON CALLAHAN ROBSON & GARZA, PLLC
`jscott@ccrglaw.com
`theuton@ccrglaw.com
`
`
`PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O’Brien
`CHERIAN LLP
`tomd@ruyakcherian.com
`elizabetho@ruyakcherian.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`18
`
`
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