Possibility of Joinder Does Not Justify Making the Patent Owner Respond Early

In SkyHawke Technologies, LLC v. L and H Concepts, L.L.C., IPR2014-01485, Paper 6 (September 30, 2014), the petitioner submitted a request for joinder of the proceeding with IPR214-00438 that it previously filed, also challenging U.S. Patent No. 5,779,566.  Petitioner wanted the patent owner to file its preliminary response early, to facilitate catching the later filed proceeding with the earlier one.  The Board saw no reason why the Patent Owner should be required to submit its Preliminary Response in this proceeding earlier than what is required by 37 C.F.R. § 42.107(b). The Board did indicate that if the motion for joinder is granted, it will direct the parties to discuss the scheduling issue and attempt to agree on reasonable adjustments to the schedule for synchronizing this proceeding with the two related proceedings.

The Board did not mention the rift between some of the panels that have construed 35 USC 315 as not permitting joinder between proceeding filed by the same party.


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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.