In Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020), the Patent Trial and Appeal Board (the Board) used factors set forth in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357 (General Plastic) to deny institution and joinder of a second, late-filed inter partes review (IPR) petition.

In October 2018, Apple Inc. filed a first IPR petition challenging all the claims of U.S. Patent No. 6,467,088 (the ‘088 Patent) owned by Unilock 2017 LLC. The first IPR petition was denied, as was Apple’s subsequent request for rehearing. Because Uniloc had served Apple with the district court complaint more than a year prior to the Board’s decision denying rehearing, Apple was barred from filing any further petitions against the ’088 Patent. Yet, in April 2020, Apple filed a second IPR petition challenging some of the claims of the ‘088 Patent, together with a Motion for Joinder with Microsoft Corp. v. Uniloc 2017 LLC, IPR2020-00023 (the 023 IPR), which the Board had instituted. The second IPR petition was nearly identical to the ‘023 IPR petition but asserted different grounds of unpatentability and different prior art than the first IPR petition. Uniloc argued that the Board should deny institution under 35 U.S.C. § 314(a) and deny joinder under 35 U.S.C. § 315(c), citing General Plastic. Apple countered that General Plastic was inapplicable here because it sought to join as a party to the ‘023 IPR and take an inactive role.

The Board reasoned that the discretion to join a party to an ongoing IPR under 35 U.S.C. § 315(c) is based on the determination that the petition warrants institution under 35 U.S.C. § 314(a), but the determination is not limited to the merits of the petition. The General Plastic decision set forth a non-exhaustive list of factors for use in determining whether the Board should deny a petition under § 314(a). After considering the General Plastics factors, the Board denied institution and thus denied the Motion for Joinder. Importantly, the Board determined that Apple’s understudy argument was not persuasive here where the copied petition is Apple’s second challenge to the patent, and should Microsoft settle, Petitioner would stand in to continue a proceeding that would otherwise be terminated. In effect, it would be as if Apple had brought the second challenge to the patent in the first instance. This is the kind of serial attack that General Plastic was intended to address, and filing a second petition with a motion for joinder does not sidestep a General Plastics analysis.