Board Uses its Discretion to Duck Joinder Question

In Microsoft Corporation v. Enfish, LLC, IPR2014-00574, Paper 13, IPR2014-00576, Paper 13, IPR2014-00577, Paper 13  (September 29, 2014), the Board denied Microsoft’s request to join the petition, with one of the prior inter partes reviews Microsoft filed against the same patent.  The joinder was essential for the petition to be timely.

Among other things, Enfish argued that joinder was not available because joinder only allows the addition of parties, and Microsoft was already a party.  The Board ducked the question by quoting the statute and concluding that “[T]he standard for joinder gives the Director discretion as to whether to join an inter partes review with another inter partes review. 35 U.S.C. § 315(c)” without expressly dealing with Enfish’s point that the statute explicitly says that parties can be joined, not petitions.  Other panels of the Board have agreed with Enfish.

The Board went on to conclude that Microsoft had not sufficiently shown that joinder was justified, and in its discretion, denied the motion for joinder.

Discretion may be the better part of valor, but here it simply allows the confusion over joinder to continue.


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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.