In Target Corp. v. Destination Maternity, a majority of a five judge panel (“Original Panel”) of the Patent Trial & Appeal Board held that (1) an IPR petitioner may not file a second petition and join with its own prior instituted IPR proceeding, and (2) § 315(c) only allows joinder of parties not “issues” (e.g., different prior art grounds for unpatentability, different challenged claims). IPR 2014-00508, Paper 18 at 3-11 (Sep. 25, 2014). On February 12, 2015, a 4-3 majority of an expanded seven-judge panel (“Expanded Panel”) reversed both holdings. Paper 28 at 6-17 (“Expanded Panel Decision”).
In this proceeding, Target filed a second IPR petition (IPR 2014-00508) for the same patent but challenged different claims than the claims the PTAB instituted based on Target’s first IPR (IPR 2013-00531). Because Target filed this second IPR petition after the one year time-bar (§ 315(b)), Target filed a motion under § 315(c) seeking joinder of this second IPR petition with the first instituted proceeding. In direct contravention of several prior Board decisions (see, e.g., Ariosa Diagnostics v. Isis Innovation Ltd. (IPR2012-00022, Paper 166 (Sept. 2, 2014)), ABB Inc. v. Roy-G-Biv Corp. (IPR2013-00286, Paper 14 (August 9, 2013), Microsoft Corp. v. Proxyconn, Inc. (IPR2013-00109, Paper 15 (Feb. 25, 2013)), the Original Panel denied Target’s joinder motion. The Original Panel majority concluded that § 315(c) does not allow joinder of issues because the plain language of the statute only allows for the joining of a petitioner/party. See § 315(c) (“[T]he Director, in his or her discretion, may join as a party . . . any person who properly files a petition.”). Thus, the Original Panel majority held Target could not join a proceeding where it already has party status.
Target requested reconsideration and the Expanded Panel reversed. Finding that the language of § 315(c) itself allows “any” person who properly files a petition to be joined as a party, the Expanded Panel held § 315(c) does not preclude joinder of the same petitioner (here, Target). In addition, the Expanded Panel held that § 315(c) also allows for issue joinder because filing a petition is “a predicate to joinder,” despite conceding that § 315(c) does not specifically address issue joinder. Paper 28 at 7. The Expanded Panel found support for this in statements made by Senator Kyl in the legislative history where he suggests joinder of not only parties but also issues. Id. at 10-12.
As this decision indicates, the PTAB may allow a time-barred petitioner to have a second-bite at the apple, i.e., it can join its own prior instituted proceeding and also raise issues that were not raised in the prior proceeding. Joinder at the PTAB, however, will likely continue to evolve as the PTAB tackles new issues and different fact patterns.