The America Invents Act (AIA) allows a petitioner to request joinder of an inter partes review (IPR) of a patent with an IPR proceeding previously instituted with respect to that patent so long as the request for joinder is filed “no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. 42.122(b). The joinder provision (35 U.S.C. 315(b)) 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.

In many cases, a petitioner requesting joinder is the same petitioner who had filed the previously-instituted proceeding. Such requests for joinder are typically made to circumvent the time bar imposed by 35 USC 315(b), which bars the institution of an IPR based on a petition that 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.” This time bar does not, however, apply to a request for joinder.

The PTAB panels are divided on whether the joinder provision is available to the same petitioner to join challenges to the same patent in two separate IPRs. In Target Corp. v. Destination Maternity Corp., a three-member PTAB panel held that 35 U.S.C. 315(c) does not contemplate joinder by someone who is already a party. (IPR2014-00508, papers 18, 20). In a 4-3 split decision, an expanded PTAB panel, however, reversed the earlier Target panel’s decision to deny joinder. (IPR2014-00508, paper 28).

More recently, in Skyhawke Technologies, LLC v. L&H Concepts, LLC (IPR2014-01485), the Board denied the petitioner’s motion for joinder of the proceeding with a previously-instituted IPR in which the same petitioner had challenged the same patent. The petitioner Skyhawke had argued that the grant of the joinder would promote the efficient determination of the patentability of the challenged patent and would not result in any prejudice to the patent owner. The patent owner had countered that the petitioner’s joinder should be denied because “35 U.S.C. 315(c) provides for joinder of parties only, not issues, and does not contemplate joinder by someone who is already a party.” Id. at p. 3.

The Skyhawke Board agreed with the patent owner and held that “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.” p. 3. The denial of the joinder doomed the petition as it was barred under 315(b).

The Skyhawke Board explained that “[a]lthough the statute uses the expansive term ‘any person,’ the overall language of 315(c) places limits on this term.” p. 4. The Skyhawke Board further referred to the legislative history for support for its position that 315(c) provides for joinder of only a person who is not already a party to a proceeding. In particular, the Board pointed to the Final Committee Report that states that under 315(c) and 325(c), “the Director may allow other petitioners to join an inter partes or posot-grant review.”

The conflicting holdings of the Skyhawke Board and the Target expanded Board leaves petitioners and patent owners uncertain regarding how other PTAB panels will treat joinder requests. Given the possibility that a panel may rely on the Skyhawke Board’s holding to deny a petitioner’s request for joinder, a petitioner barred by Section 315 (b) may not get a second bite at the apple to present a new ground of unpatentability of a previously challenged claim on which the Board did not institute a trial.