Summary of Presentation Slides: Litigants have long utilized duplicative filing of IPR or CBM petitions to obtain the benefit of arguments made by earlier petitioners and to improve leverage for settlements with patent owners. Such litigants often rely an important statutory exception for joinder under 35 U.S.C. § 315(c) to enable them to file IPR petitions that otherwise would have been barred under the one year rule under § 315(b) and join them with already instituted proceedings. In determining whether two proceedings should be joined, the PTAB examines the impact on the trial schedule, costs, discovery, and simplification of briefing. According to 2016 statistics, the PTAB is granting joinder at rates higher than ever, perhaps due to the increasing number of PTAB decisions on the subject providing guidance to petitioners. As exemplified in two recent expanded panel decisions in Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, Papers 28 & 31 (PTAB Feb. 12, 2015) and Zhongshan Broad Ocean Motor, Inc. et al. v. Nidec Motor Corp., Case IPR2015-00762, Paper 16, (PTAB Oct. 5, 2015), the use of joinder has increasingly been permitted to allow petitioners to correct their own mistakes or to add new issues to their own previously instituted proceedings. Nonetheless, such “same-party” joinders are still more often the exception than the rule, and the PTAB has generally rebuffed petitioners’ attempts at using the PTAB’s denials of earlier-filed petitions as a roadmap to fix arguments made in subsequent petitions. Whenever joinder is not requested, the determination of whether a petition should be instituted may often depend on whether the same or substantially the same prior art or grounds have previously raised, under 35 U.S.C. § 325(d). This inquiry examines the equities and fairness to patent owners who must defend against duplicative or near-duplicative proceedings.
The foregoing topics are discussed in further detail in a Power Point presentation on “Strategic Considerations for Duplicative Filings before the PTAB,” linked here: Joinder Presentation Slides