In an institution decision addressing the scope of joinder under § 315(c), the Patent Trial and Appeal Board (PTAB) found that its power to grant joinder is limited to adding a party to the proceeding, and that it cannot add new issues. Proppant Express Investments, LLC v. Oren Technologies, LLC, No. IPR2018-00914 (PTAB Nov. 8, 2018) (Wetherly, APJ) (Cherry, APJ, concurring).

Proppant Express Investments (PropX) filed a first petition for inter partes review in September 2017. Six months later, the PTAB granted a partial institution on all but claim 4 of the challenged claims. After the Supreme Court of the United States’ decision in SAS Institute v. Iancu (IP Update, Vol. 21, No. 5), the PTAB modified its institution decision to institute a trial as to claim 4. On April 16, 2018, PropX filed a second petition. Because the second petition would have otherwise been time-barred, since PropX had been served with a complaint more than one year earlier, PropX filed a motion for joinder under § 315(c). The second petition added a new prior art reference, and PropX asserted that “[a]side from combination of references used to challenge claim 4, claim constructions, prior art and other evidence,” the arguments in the petition remained the same as those in the first petition.

The PTAB denied PropX’s request for joinder and denied the second petition as time barred. In the relevant part, § 315(c) states: “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 . . . .” The PTAB found that the phrase “join as a party” limited its joinder power to joining a new party, and § 315(c) gave it no power to join new issues. The PTAB recognized that expanded panels had found differently in Target Corp. (IP Update, Vol. 18, No. 3) and Nidec Motor Corp. (IP Update, Vol. 18, No. 11), but neither decision had been designated precedential. The PTAB therefore adopted the dissent’s reasoning in Target Corp.

APJ Cherry wrote separately because he disagreed with the majority’s reasoning and articulated alternate grounds for denying joinder. He stated that he would have found that the PTAB has discretionary power to grant joinder for newly raised issues, but in this case, joinder was not warranted where the totality of circumstances showed that PropX was seeking a “second bite at the apple” and could have corrected the “mistakes” in the first petition by filing the second petition much earlier. Additionally, he stated that he would have found joinder futile because he would have denied institution of the second petition under the PTAB’s discretionary authority to deny institution using the non-exhaustive list of factors set forth in the PTAB’s precedential General Plastics decision (IP Update, Vol. 20, No. 10) for evaluating follow-on petitions. APJ Cherry stated that under such an analysis, the second petition would have been denied as a belated attempt to correct the first petition after the patent owner and the PTAB had identified weaknesses in PropX’s evidence with respect to claim 4.