On September 29, 2014, the Patent Trial and Appeal Board (PTAB) denied Microsoft Corporation’s joinder motion and its later-filed petition for inter partes review because the petition was filed outside the one-year-statutory period of 35 U.S.C. § 315(b).

Microsoft filed a petition for inter partes review of U.S. Patent No. 6,151,604 (IPR2013-00562) within one year of being served with the complaint in Enfish LLC v. Microsoft Corporation, No. 2:12-cv-7360 (C.D. Cal.). The PTAB instituted review (Paper No. 15). Microsoft filed a second petition for inter partes review of the same patent (IPR2014-00574) nineteen months after service of the complaint. Normally, a petition filed more than one year after service of a complaint for patent infringement is barred by 35 U.S.C. § 315(b): “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.” But Microsoft included a motion to join the second petition with the first petition in an attempt to circumvent the one-year bar under 35 U.S.C. § 315(b): “The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).”

Enfish opposed the motion for joinder, arguing that Microsoft cannot circumvent the one-year bar by joining the same party to its first petition. Instead, the joinder provision is “clearly directed towards the joining of additional (or different) parties, and not the joining of multiple proceedings involving the exact same parties.” And, to the extent the statute allows for joining the same party, the PTAB should use its discretion to deny Microsoft’s motion.

The PTAB did not address the question of whether the same party can avoid the one-year bar by joining itself to a petition filed within one year of service of a complaint for patent infringement. Instead, it exercised its discretion, finding that “Microsoft has not convinced us that joining this Petition with the previously instituted trials would ‘secure a just, speedy, and inexpensive resolution’” as is required by 37 C.F.R. § 42.1(b). And, as a result, the PTAB found that the second petition was not timely filed.

Microsoft Corporation v. Enfish, LLC, PTAB Case No. IPR2014-00574.