• Ubiquiti Inc. v. XR Communications LLC D/B/A Vivato Tech.Institution denied
  PTAB · May 6, 2024 · IPR2024-00148 · APJ James J Mayberry · IPR · Institution

  The Board denied joinder and denied institution because the target IPR had been terminated and the petition was time-barred under § 315(b).

  RulingsInstitution decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “A threshold issue for joinder is that there must be an inter partes review to which the party seeking joinder can join. See 35 U.S.C. § 315(c) (giving the Director discretion to join the moving party to “that inter partes review,” that is, to the inter partes review that has been instituted).6 The ’613 IPR was terminated on October 3, 2023, more than one month before Petitioner filed the Petition and motion for joinder. Understanding this hurdle, Petitioner moves for us to reopen the ’613 IPR proceeding. Paper 2; see also Paper 3, 1 (“Ubiquiti is filing this motion for joinder concurrently with a motion for leave to file a motion to reopen IPR2022-00613, [and] a petition for inter partes review of the ’376 patent.”). Patent Owner opposes the motion. Paper 9. Petitioner replied to the opposition. Paper 10. In an Order filed concurrently with this Decision, we deny Petitioner’s motion to reopen the ’613 IPR proceeding.” slip op. at 10

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

    “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.” Petitioner was served with a complaint alleging infringement of the ’376 patent on June 21, 2021—over two years before filing the present Petition. See Paper 9, 2; see also Ex. 3001 (providing proof of service); Paper 10 (not disputing Patent Owner’s contention regarding the service date). The AIA statute and our rules permit, at the discretion of the Director, a party to be joined to an inter partes review proceeding even if that party filed its petition after the one-year time bar. See 35 U.S.C. § 315(b) (“The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).”); 37 C.F.R. § 42.122(b) (“The time period set forth in § 42.101(b) [that is, the one-year time bar] shall not apply when the petition is accompanied by a request for joinder.”). However, as we determine above, we deny Petitioner’s motion for joinder, as there is no inter partes review proceeding to join. As such, the provision allowing an otherwise time-barred petition is not implicated here. Accordingly, Petitioner’s Petition is time-barred under 35 U.S.C.” slip op. at 11

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied time barInstitution denied

    “CONCLUSION We deny Petitioner’s motion for joinder, as the ’613 IPR proceeding, to which Petitioner seeks joinder, has been terminated and will not be reopened. See Paper 11. Also, because the Petition was filed more than one year after Petitioner was served with a complaint for infringing the ’376 patent, the Petition is time-barred under 35 U.S.C. § 315(b), and is denied. V. ORDER In consideration of the foregoing, it is hereby ORDERED that, pursuant to 35 U.S.C. § 315(c), we deny Petitioner’s motion for joinder; and FURTHER ORDERED that an inter partes is not instituted.” slip op. at 12

  Discretionary denial
  Patents in suitUS 10,594,376

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