Patentee Argues Joinder Statute Does Not Excuse Late IPR Petitions

There has been a fair amount of controversy regarding issue joinder practices at the PTAB.  But, to date, the language of 315(b) that seemingly excuses late IPR petition filings has been taken at face value.  That is, while 315(b) limits initiation of a an IPR to within 12 months of service of a complaint for infringement of the subject patent, the last sentence explains that "the time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c)."

In a writ of mandamus filed with the Federal Circuit last week, the exception of 315(b) is argued as applicableonly to timely filed petitions in which the request for joinder occurs outside of the 12-month window. In other words, the exception does not permit petitioners that have already missed their 12-month window to remedy the problem via joinder. 

The writ stems from a dispute between patentee VirnetX Inc., and Apple over VirnetX patents 6,502,135 and 7,490,151. Five years prior (before the AIA was enacted) VirnetX sued Apple for infringement of the two patents.  Apple was unsuccessful in invalidating these patents in previous reexamination proceedings, and IPR did not yet exist.  So, when third party was able to successfully initiate IPRs against the VirnetX patents, Apple sought joinder. The PTAB granted joinder based on the exception to 315(b).

In its writ (here), VirnetX presented the dispute as follows:

Whether the Patent Trial and Appeal Board impermissibly exceeded its statutory authority by joining a time-barred entity to an existing inter partes review proceeding, in disregard of the unambiguous timing requirement of 35 U.S.C. § 315(b) and the corresponding requirement of 35 U.S.C. § 315(c) that a joinder request must be predicated on a timely filed petition?

VirnetX argues that the timing exception of 315(b) applies only to "requests for joinder," and that the language of  joinder statute 315(c) still requires a "properly filed" petition." 

Not surprisingly given its historic practices, the PTAB sided with Apple that VirnetX’s interpretation of section 315(b) would render its second sentence a legal nullity.  In other words, under VirnetX’s interpretation, section 315(b)’s exemption would never apply, as no petition filed more than a year after service could ever be the basis of participation in any proceeding.

VirnetX counters in its writ that 315(b) would apply in circumstances where a petition seeking IPR is timely filed before the one-year deadline, but a request for joinder is filed after that deadline.  The problem with this argument is 315(b) relates to the timing of a petition filing, not a motion that would be perfectly appropriate if the petition were timely filed in the first instance.  The only timing requirement for a motion for joinder is that it be sought within 30 days of institution.

The CAFC has temporarily stayed the IPR, with briefing to conclude next week.  Order (here)