An inter partes review (“IPR”) proceeding may be joined with a pending IPR proceeding provided that certain conditions are satisfied.1 Even if all conditions are satisfied, however, joinder is not an absolute right. Instead, joinder is granted at the discretion of the Director acting through the Patent Trial and Appeal Board (the “Board”).
The applicable statute, 35 U.S.C. § 315 (c), provides:
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.
Although the statutory regime seems straightforward, the Board has issued competing decisions on whether the statute permits joinder of issues raised by thesame petitioner. Indeed, even though numerous panels of the Board have approved the joinder of new issues raised by the same petitioner,2 other panels have found instead that joinder under § 315(c) is limited only to the joinder of new parties.3
Related statutory provisions shed light on the impact of a broader and more permissive construction of § 315(c). Notably, joinder of issues would allow a single petitioner to bring a new IPR petition and move to join that IPR proceeding to one of its pending IPR proceedings in circumstances where a standalone petition would otherwise be denied as untimely.4 As the last sentence of § 315(b) makes clear, the requirement that an IPR petition be filed no more than one year after the date the petitioner is served with a complaint alleging infringement of the patent does not apply to requests for joinder:
(b) Patent Owner’s Action.— An inter partes review may not be 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. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
Significantly, however, the relevant regulations limit when joinder may be requested. Specifically, 37 C.F.R. § 42.122(b) requires that “[a]ny request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.” In other words, regardless of whether new issues or parties are being joined, joinder with an existing IPR proceeding is permitted only if that request is made within one month of a decision to institute that IPR proceeding.5
Recently, the Board addressed the proper construction of § 315(c) through an expanded seven-member panel.6 Indeed, in expanding the panel, the Board appreciated the importance of the issue, concluding that “[t]he inconsistencies in the interpretation of the statute presented by the Decision Denying Joinder in the instant proceeding are a sufficient reason for expanding the panel.”7 Ultimately, the majority held that it was abuse of discretion for a five-member panel of the Board to deny joinder of IPR proceedings simply because the petitions for the IPR proceedings were brought by the same petitioner.8 Surprisingly, despite this decision by an expanded panel, the proper construction of § 315(c) remains an open question.9
The Target Decision
Last February, a seven-member panel of the Board in a split 4–3 decision concluded that § 315(c) of the Patent Act not only provides for joinder of new parties, but also permits joinder of issues raised by the same party.10 In granting the petitioner’s request for rehearing of an earlier five-member panel decision denying joinder, the majority recognized that § 315(c) does not specifically mention the joinder of issues but instead permits “any person” who properly files a petition under Section 311 to be joined at the discretion of the Director.11 And, of course, Section 311 prohibits only the patent owner from filing an IPR petition.12 To reach its decision, a majority of the Board found—contrary to the earlier decision denying joinder—that the statute was ambiguous and therefore, the Board should consult other statutory language, legislative history, and statutory purpose to arrive at the proper construction of the statute.13
In its review of the statute, the Board stated that the earlier decision denying joinder selectively read out portions of § 315(c), because it did not give sufficient weight to other specifically referenced sections in the statute.14 As the Board explains, the statute contemplates evaluating the merits of the petition accompanying a motion for joinder to determine whether joinder should be granted.15 In other words, the requirement that a petition accompany a motion for joinder suggests that issues—as well as new parties—may be joined.16
The Board also reasoned that the legislative history did not preclude the joining of new issues, or otherwise limit joinder only to new parties.17 Instead, the legislative history refers to joining “new arguments” to the existing proceeding, thereby suggesting that Congress contemplated the joinder of additional issues.18
Moreover, the Board found that the purpose of the America Invents Act (“AIA”) counseled in favor of permitting the joinder of issues. For example, one such purpose was to limit unnecessary and counterproductive litigation costs.19 Another purpose, as articulated in the regulations, was to “secure the just, speedy, and inexpensive resolution of every proceeding.”20 Thus, if discretionary joinder were not permitted, those issues could resurface in district court litigation, which—contrary to statutory intent—would only increase litigation costs and waste judicial resources.21
The Board disagreed with the patent owner’s argument that consolidation under § 315(d) is the proper procedural mechanism to join multiple IPR proceedings involving the same patent.22 Consolidation under § 315(d) would only be permitted in limited circumstances because consolidation—unlike joinder under § 315(c)—would still require the underlying petitions to be filed within the one year time period set forth in § 315(b).23 In addition, consolidation would only be proper for IPR proceedings involving the same patent.24
The Board also disagreed that allowing joinder of issues would lead to harassment of patent owners because the statute provides that joinder is at the discretion of the Director.25 Thus, the Board can exercise its authority to deny joinder where such harassment is clear.26 On the other hand, however, allowing joinder of issues in certain circumstances may allow patent owners to avoid a cloud over entitlement to their patent.27
Thus, based on the statute itself, other statutory language, legislative history, and statutory purpose, a majority of the expanded seven-member panel concluded that § 315(c) permits the joinder of issues by the same petitioner.
Cases since the Target Decision
Since the Target decision this past February, there have been a handful of interesting cases involving the joinder of issues.
Micro Motion, Inc. v. Invensys Systems, Inc.
Almost a week after the Target decision, another three-member panel of the Board denied a request to join a concurrently-filed IPR petition with an pending IPR proceeding on the same patent by the same petitioner.28 Absent the motion for joinder, the new IPR petition in that case would have been time-barred under § 315(b), because the petitioner was served more than one year before the IPR petition was filed.29 The Board did not directly address whether § 315(c) permits joinder of issues.30 Instead, the Board refused to exercise its discretion to permit joinder, because it viewed the ground set forth in the new petition as “a second bite at the apple” since “Petitioner neglected to include an analysis” in the earlier-filed petition and “offers now the analysis it could have offered then.”31 The Board also identified equitable circumstances where joinder of issues may be proper including (1) “when a new product was launched, leading to a threat of new assertions of infringement;” and (2) “when additional claims had been asserted against petitioner in concurrent district court litigation.”32
Skyhawke Technologies, LLC v. L&H Concepts, LLC
On March 30, 2015, a three-member panel of the Board denied joinder, concluding—contrary to the Target decision—that “§ 315(c) provides for the joinder of parties only, not issues, and does not contemplate joinder by someone who is already a party.”33 In particular, the Board unanimously concluded that in § 315(c), “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,” and the statute does not explicitly refer to joining of new issues.34 The Board found that legislative history also supports this construction because it refers to “other petitioners” in the context of IPR joinder.35
The Skyhawke decision contradicts the seven-member panel decision in Target that held § 315(c) permits joinder of issues by the same petitioner.
Interestingly, even though the Skyhawke decision cites to arguments presented in the patent owner’s preliminary response in Target, the Skyhawke decision is notably silent on the expanded panel’s ultimate conclusion in Target that the statute permits joinder of issues. To resolve the apparent conflict between these two cases, the Board likely will need to revisit this issue in a later precedential decision.
Oxford Nanopore Technologies Ltd. v. University of Washington
On April 27, 2015, a three-member panel of the Board granted joinder of issues where “[t]he two proceedings involve the same parties, the same claim of the same patent . . . and both cite the [a common prior art] reference. Thus, as to claim construction and interpretation of the prior art, the two proceedings involve common issues.”36 Contrary to the Patent Owner’s argument, the Board noted that the majority decision in Target held that “§ 315(c) authorizes joinder of additional grounds to a proceeding involving the same parties.”37 The Board also found persuasive that “neither Petitioner, nor its real party in interest, nor its privy has been served with a complaint alleging infringement of the [relevant] patent, [thus] Petitioner is not using its Joinder Motion as a means to circumvent the § 315(b) bar and obtain consideration on the merits of challenges it otherwise would not be entitled to present.”38 Further, any prejudice to the patent owner was resolved by the Board modifying the schedule to permit briefing and discovery.39
Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, LLC
Another three-member panel of the Board recognized the split in authority generated by the Board in Target and Skyhawke but chose to side-step the issue rather than resolve the conflict.40 In particular, the Board stated that it “need not address the issue here, however, because, even if the same party joinder is permissible, we are not persuaded that joinder is appropriate in this case.”41 Rather than address the proper scope of § 315(c), the Board denied joinder because the “Petitioner articulates no persuasive reason why, using reasonable efforts, the [new prior art] reference could not have been identified and relied upon in the earlier, timely-filed petitions.”42 As a result, it was not “a case of changed circumstances—such as new claims being asserted during district court litigation or new threats of infringement—that would make joinder an equitable remedy.”43 Instead, it was a second bite at the apple that “would not lead to the just, speedy, and inexpensive resolution of the proceedings.”44 Thus, the Board denied joinder.
Since joinder motions are not subject to the one-year bar under § 315(b), joinder remains an attractive procedural vehicle not only for new parties but also for petitioners who have already filed an IPR petition but still wish to have new issues considered. Given that a motion for joinder must be filed “no later than one month after the institution date of any inter partes review for which joinder is requested,” existing petitioners—and new parties—should actively consider whether joinder is appropriate leading up to and shortly after receiving an institution decision.45 The short window of time provided by the regulations means that those interested in joinder must move swiftly.
Not surprisingly, patent practitioners can expect that patent owners will rely on the Skyhawke decision to resist joinder of issues by the same party, and that petitioners will rely on the expanded panel decision in Target to seek joinder of issues. Thus, it would be prudent for practitioners, in their joinder briefing, to address not only those decisions in their favor but also to distinguish those decisions that may appear unfavorable.
Given the open question on the proper construction for § 315(c), joinder decisions likely will continue to be panel dependent. Regardless, there are important considerations for petitioners to keep in mind as the Board sorts out the proper construction of § 315(c). For example, petitioners can expect that rehashing arguments or merely curing defects identified to the petitioner in earlier decisions by the Board will likely invite a denial of their motion for joinder.46 Instead, petitioners should consider articulating any changed circumstances—such as new threats of infringement or new asserted claims—that would justify granting joinder as an equitable remedy.47
Given the effect that it can have on pending IPR proceedings and parties, the value and impact of joinder should not be underestimated. As we wait for the Board to resolve the apparent conflict between its joinder decisions, practitioners should tread carefully in advocating for or resisting joinder.