On May 22, 2015, the Board granted Petitioners Motion for Joinder in Mercedes-Benz USA, LLC and Mercedes-Benz U.S. International, Inc. v. Innovative Display Technologies, LLC, IPR2015-00360. Mercedes-Benz sought to join its proceeding with LG Display Co., Ltd. v. Innovative Display Technologies, LLC, IPR2015-00360, which was instituted on January 13, 2015. Mercedes-Benz filed its petition approximately one month before the LG IPR was instituted. Both proceedings seek to invalidate claims of U.S. Patent No. 7,300,194 (“the ‘194 patent”) on identical grounds.
Joinder is governed by 35 U.S.C. § 315(c). A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. A party seeking to join a pending IPR must file its own IPR petition and joinder motion no later than one month after the institution date of the pending IPR. 37 CFR § 42.122.
In addition to limiting their Petition to the identical grounds as those asserted in the LG IPR, Mercedes-Benz also relied upon the same declaration of the technical expert that LG submitted in support of its petition. The Patent Owner opposed joinder, arguing that joinder would delay the proceedings because the Petitioner had not agreed to abide by the LG IPR trial schedule. The Patent Owner also argued that it intended to seek additional discovery against Mercedes-Benz to determine if LG is controlling or funding the Mercedes-Benz proceeding, which would be beyond the scope of discovery already sought in the LG IPR.
In granting the motion, the Board noted that joinder is not automatic, but joinder in this instance would promote efficient resolution of the proceedings because Mercedes-Benz raises no new issues in its petition and the Patent Owner will be able to address the same challenges in a single proceeding. The Board ordered that joined proceeding would be governed by the trial schedule already entered in the LG IPR. The Board also required that LG and Mercedes-Benz would be required to file papers (except motions that do not involve the other party) as a single, consolidated filing. In other words, the two petitioners must, for example, file a single paper in response to the Patent Owner’s substantive response to the Board’s LG IPR institution decision.