SkyHawke Technologies, LLCv.L&H Concepts, LLC

Patent Trial and Appeal Board

Mar 20, 2015

08392280 (P.T.A.B. Mar. 20, 2015)

Trials@uspto.gov Paper 13
571-272-7822 Entered: March 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SKYHAWKE TECHNOLOGIES, LLC,
Petitioner,

v.

L&H CONCEPTS, LLC,
Patent Owner.
____________

Case IPR2014-01485
Patent 5,779,566
____________

Before JAMES T. MOORE, PATRICK R. SCANLON, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION
Denying Petitioner’s Motion for Joinder
And Denying Institution of Inter Partes Review
37 C.F.R. §§ 42.108, 42.122
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I. INTRODUCTION
Petitioner, SkyHawke Technologies, LLC, filed a corrected Petition
(Paper 5, “Petition” or “Pet.”)1 to institute an inter partes review of claims 6,
15, and 16 of U.S. Patent No. 5,779,566 (Ex. 1001, “the ’566 patent”)
pursuant to 35 U.S.C. §§ 311–319. The Petition involves the same parties and
patent at issue in instituted trial proceeding, SkyHawke Technologies, LLC v.
L&H Concepts, LLC, Case IPR2014-00438 (“the ’438 proceeding”).2
Petitioner concurrently filed a Motion for Joinder (Paper 3, “Mot.”) seeking
joinder of the Petition with the ’438 proceeding. The Motion for Joinder was
filed within one month after institution of the ’438 proceeding, as required by
37 C.F.R. § 42.122(b). Petitioner also filed Petitioner’s Reply in Support of
its Motion for Joinder (Paper 11).
Patent Owner, L&H Concepts, LLC, filed a Patent Owner’s Response
to Motion for Joinder (Paper 10) and a Preliminary Response (Paper 12,
“Prelim. Resp.”). We consider and rule upon the Petition pursuant to the
authority granted by the Director under 37 C.F.R. § 42.4.
For the reasons provided below, we deny Petitioner’s Motion for
Joinder. We also deny the Petition and do not institute an inter partes review
as to claims 6, 15, and 16 of the ’566 patent.

1 Paper 5 is a corrected Petition for inter partes review, filed September 25,
2014, and subsequently accepted by the Board. See Paper 7. The original
Petition for inter partes review (Paper 1) has been accorded the filing date of
September 11, 2014. Paper 4.
2 The same parties and patent also are involved in related instituted trial
proceeding, SkyHawke Technologies, LLC v. L&H Concepts, LLC, Case
IPR2014-00437.
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II. ANALYSIS
A. Decision on the Motion for Joinder
Petitioner argues that the requested joinder is appropriate because
(1) “joinder will promote the efficient determination of the patentability of the
’566 patent” (Mot. 7); (2) “there will be no prejudice to [Patent Owner] from
joining the proceedings” (id.); and (3) Petitioner “will suffer undue prejudice”
if the Petition is not joined to the ’438 proceeding (id. at 8). Patent Owner
takes exception with all three of these assertions and argues that the Motion
for Joinder should be denied. See generally Paper 10.
In addition, Patent Owner argues Petitioner’s Motion for Joinder should
be denied because 35 U.S.C. § 315(c) provides for the joinder of parties only,
not issues, and does not contemplate joinder by someone who is already a
party. Prelim. Resp. 3–5 (citing Target Corp. v. Destination Maternity Corp.,
Case IPR2014-00508 (PTAB Sept. 25, 2014) (Papers 18, 20)). We agree with
Patent Owner.
Section 315(c) provides:
(c) JOINDER.—If the Director institutes an inter partes
review, the Director, in his or her discretion, may join as a
party to that inter partes review any person who properly
files a petition under section 311 that the Director, after
receiving a preliminary response under section 313 or the
expiration of the time for filing such a response,
determines warrants the institution of an inter partes
review under section 314.
In our view, the phrase “join as a party” indicates that only a person who is
not already a party to an instituted inter partes review can be joined to the
proceeding. A person cannot be joined as a party to a proceeding in which it
is already a party. The statute does not refer to the joining of a petition or new
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patentability challenges presented therein, nor does the statute refer to the
joining of a new issue (as opposed to a person).
Although the statute uses the expansive term “any person,” the overall
language of § 315(c) places limits on this term. For example, the phrase “who
properly files a petition under section 311” excludes the owner of the patent at
issue from “any person” because § 311(a) specifies “a person who is not the
owner of a patent may file with the Office a petition to institute an inter partes
review of the patent.” Similarly, the phrase “join as a party” excludes a
person who is already a party.
Furthermore, to the extent there is any ambiguity in § 315(c), the
legislative history supports our view that § 315(c) provides for joinder of only
a person who is not already a party to the proceeding. Specifically, the Final
Committee Report states, under §§ 315(c) and 325(c), “[t]he Director may
allow other petitioners to join an inter partes or post-grant review.” H.R. REP.
NO. 112-98, pt.1, at 76 (2011) (emphasis added). We discern no reason why
the drafters intentionally would describe only part of their understanding of
what the statute provides, for example, by referring to joinder of “other
petitioners,” if, in fact, they understood the statute to provide for joinder also
of same petitioners.
In view of the foregoing, we determine that the relief requested by
Petitioner—joining the Petition to an instituted inter partes review to which
Petitioner is already a party—is not permitted under § 315(c). Accordingly,
Petitioner’s Motion for Joinder is denied.

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B. Decision on the Petition
Institution of inter partes review is barred when the petition is filed
more than one year after the petitioner is served with a complaint alleging
infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). The
one-year bar, however, does not apply to a request for joinder. 35 U.S.C.
§ 315(b) (final sentence); 37 C.F.R. § 42.122(b).
The record indicates that Petitioner was served with a complaint
asserting infringement of the ’566 patent more than one year before filing the
Petition. Pet. 3. Accordingly, in view of our decision to deny Petitioner’s
Motion for Joinder, we deny the Petition because it was not filed within the
time limits imposed under 35 U.S.C. § 315(b).

III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Motion for Joinder is denied; and
FURTHER ORDERED that the Petition is denied and no trial is
instituted.

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PETITIONER:
Thomas J. Fisher
Scott McKeown
Alexander Englehart
Christopher Ricciuti
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
cpdocketfisher.oblon.com
cpdocketmckeown.oblon.com
cpdocketenglehart.oblon.com
cpdocketricciuti@oblon.com

PATENT OWNER:
David M. Hoffman
Matthew K. Wernli
FISH & RICHARDSON P.C.
hoffman@fr.com
IPR30912-0003IP3@fr.com