The United States Supreme Court will hear oral arguments on October 15, 2014 on the issue of Claim Construction in Teva Pharm. USA, Inc. v. Sandoz, Inc. The question presented by the Court is whether a district court's factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires, or only for clear error, as FRCP 52(a) requires.
Federal Circuit held that PTAB's decision not to institute an IPR review is final and not appealable. ZOLL LIfecor Corp. v. Philips Elec. N.Am. Corp., Nos. 2014-1588 to -1595 (Fed. Cir. Aug. 25, 2014) (O' Malley, J.).
PTAB denied petitioner's motion for joinder on the grounds that the latter petition was filed more than eight months after the earlier petition. Macronix Int'l Co. v. Spansion LLC, No. IPR2014-00898, Paper 15 (PTAB Aug. 15, 2014) (Rice, J.) On November 8, 2013, Macronix International filed an IPR petition for review of claims 1-14 of USP7,151,027 and the petition was granted on May 8, 2014 for claims 1-6 and 8-13. On June 13, 2014, Petitioner filed a petition and motion for joinder challenging claims 7 and 14, and proposed a revised schedule.
Section 315(c) of AIA gives the PTAB discretion to join as a party "any person who properly files a petition under section 311." 35 USC 315. In exercising its discretion, PTAB must ensure that the proceeding is "just, speedy, and inexpensive." 35 USC 316. As the moving party, Petitioner has the burden of proving that it is entitled to the relief sought. Petitioner argued that joining the petitions would have a minimal impact on the patent owner because the petition relies on the same declarant and prior art references, and the proposed revised schedule would add only seven weeks to the existing schedule. Patent owner opposed the motion arguing that the instant proceeding raises numerous substantive issues not present in the other case and that it would be prejudiced by the proposed revised schedule. In denying the motion for joinder, PTAB concluded that the proceeding for the earlier petition was already well underway with the patent owner having cross-examined petitioner's declarant and a joinder at this stage would require a lengthy delay in the ongoing review.
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