PTAB Limits Discretion to Permit Same Party and New Issue Joinder

March 19, 2019

What Do We know?

1. Petitioner had filed IPR2017-02103 challenging multiple claims, including claim 4, of U.S. Patent No. 9,511,929. PTAB instituted IPR2017-02103, but not on the ground challenging claim 4. Petitioner filed a joinder motion with IPR2018-00914 and again requested review of claim 4, but after the one-year statutory bar period expired.

2. PTAB’s newly formed Precedential Opinion Panel (“POP”), comprised of the Director, Commissioner for Patents, and PTAB Chief Judge, granted Petitioner’s rehearing request and reviewed the following three questions:

• Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
• Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
• Does the existence of a time bar under 35 U.S.C. § 315(b), or any other relevant facts, have any impact on the first two questions?

3. The POP answered all three questions in the affirmative.

4. The POP concluded that PTAB has discretion to permit “same party” joinder because the expansive meaning of “any person” in § 315(c) means that “any person except the patent owner” may be joined to an instituted IPR proceeding. Paper 38, 5-6.

5. The POP concluded that, under § 315(c), new issues of anticipation or obviousness based on prior art patents or printed publications may be joined to an existing IPR proceeding if they satisfy the “reasonable likelihood” of prevailing standard under § 314(a). Id. at 11-12.

6. The POP stated that the one-year time bar under § 315(b) is one of multiple factors PTAB would consider when exercising its discretion to permit joinder under § 315(c). Id. at 16.

7. The decision emphasized that PTAB will exercise its discretion to allow a time-barred party to join new issues “only in limited circumstances” to promote fairness and prevent undue prejudice, such as when a patent owner adds new patent infringement claims in district court after the one-year statutory bar period expires. Id. at 10-11, 15-16.

8. The POP denied the Motion for Joinder and Petition for inter partes review, because Petitioner was attempting to correct its own errors and the Petition was otherwise time-barred under § 315(b).

Practice Tips:

1. PTAB is unlikely to exercise its discretion under § 315(c) and permit joinder where the motion is being used for a “second bite at the apple,” e.g., to correct petitioner’s own defect or deficiency in an earlier petition.

2. The last sentence of § 315(b) provides a significant exception to the one-year time bar for joinder requests under § 315(c). The exception may be relied on when a patent owner asserts new patent infringement claims against petitioner after the one-year bar date has passed.

3. When an otherwise time-barred petitioner moves to join new issues to an instituted proceeding, PTAB will consider multiple factors that promote fairness, reduce undue prejudice to a party, conserve judicial resources, and ensure quiet title to patent owners.