A Patent Trial and Appeal Board (PTAB) panel granted petitioner Samsung Electronics Co., Ltd.’s (“Samsung”) motion for joinder with IPR2015-00806, which was filed by Google Inc. and relates to U.S. Patent No. 7,765,482 (the “’482 Patent”). Although the patent owner, Summit 6 LLC, did not oppose the motion for joinder, the PTAB still analyzed the motion to determine whether the circumstances warranted joinder.
Samsung’s motion for joinder was considered timely under 35 U.S.C. § 42.122(b) because it was filed within one month of the PTAB’s decision to institute review of the IPR filed by Google. The one-year time bar of 35 U.S.C. § 315(b) was not applicable because Samsung’s petition was accompanied by a motion for joinder. The PTAB considered several factors in granting the motion for joinder. First, the Samsung petition contained identical grounds to the Google petition, so it would not impact the substantive issues before the PTAB. Relatedly, the Samsung petition would not require additional briefing from the patent owner. Second, Samsung represented that joinder would not require modifications to the Scheduling Order. As a result, the PTAB determine that “Samsung has met its burden to demonstrate that joinder with IPR2015-00806 is warranted under the circumstances.”
This opinion appears to indicate that a motion for joinder is not merely pro forma in instances where the parties do not oppose joinder. Rather, the petitioner seeking joinder is still required to establish that joinder is warranted.
Samsung Electronics Co., Ltd. V. Summit 6 LLC, IPR 2016-00029, Paper 9 (PTAB Apr. 4, 2016).