Takeaway: Depending upon the judges on the panel, a petitioner may not be allowed to join a newly-filed petition to an instituted proceeding that addresses different challenges to the same patent where the petitioner is the same in both proceedings. This may result in a petition being time-barred.

In two separate Decisions (Decision Denying Motion for Joinder (Paper 18) and Decision Denying Institution of Inter Partes Review (Paper 20)), the Board denied Petitioner’s Motion for Joinder by a 3-2 vote, and denied institution of the inter partes review as being time-barred by the same vote.

Joinder

Petitioner had previously filed two other petitions for inter partesreview of the ’563 Patent with only some overlapping challenges.  The previous petitions were instituted as IPR2013-00530 and IPR2013-00531.  Concurrently with filing the Petition in this proceeding, Petitioner sought to have the proceeding joined with the instituted IPR2013-00531.

The Board began by reviewing the joinder statute, which allows the joinder to an inter partes review any person who properly files a petition.  The Board interpreted this narrowly, finding that it does not allow the joining of a petition, but rather the joining of a petitioner, and because Petitioner is already a party to the proceeding in IPR2013-00531, it cannot be joined to that proceeding.  The Board recognized that in other decisions, the Board has granted joinder of an additional petition or proceeding, rather than a person, to an instituted inter partes review.  The Board specifically disagreed with the reading of the statute in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022 (PTAB Sept. 2, 2014) (Paper 66).  The Board here focused on the fact that there has to be an express grant of authority to allow an agency to act, not an express prohibition to prohibit action, as Ariosastated.

The dissent argued that if 35 U.S.C. § 315(c) only allows for joinder of other parties making the same arguments as the original petition, then why does it also require the joining party to file its own petition. The Board responded, finding that filing a petition by a prospective party serves purposes other than setting forth challenges to claims in a patent, such as identifying real parties in interest, related matters, lead and backup counsel, and service information, as well as requiring payment of a fee.

The Board then reviewed the legislative history, which states that “[t]he Director may allow other petitioners to join an inter partes or post-grant review.” H.R. Rep. No. 112-98, pt. 1, at 76 (2011). The Board stated that the dissent acknowledges this, but does not address it and instead relies upon comments from a single legislator to conclude that joinder of issues was envisioned by Congress.  The Board relied on Supreme Court precedent to show that reliance on the comments of a single legislator is improper when they are contrary to a full report.

The Board also stated that its interpretation of § 315(c) is supported by the language in § 315(b), which clarifies that the one year time bar does not apply to a request for joinder. The Board noted that the time bar does not apply to whether the joinder is granted, but whether it is requested.  Therefore, the time bar does not prevent the Board from considering a person’s request to join an instituted inter partes review as a party, meaning that a time-barred petitioner can only join an existing proceeding and the challenges presented in that proceeding.

The dissent began by stating that while Patent Owner opposed the Motion for Joinder, it did not do so on the grounds that the Board does not have the discretion to join the proceedings. Therefore, the majority addressed an issue not presented by the parties.  The dissent relied upon the prior rulings of the Board that have consistently allowed joinder of additional grounds by the same party.  The dissent noted that statutory construction was not briefed by the parties, and, therefore, the majority should not have denied the Motion solely on those grounds.  The dissent then presented its own statutory construction analysis and determined that joinder of additional grounds by the same party is permissible.

Institution

Patent Owner had served Petitioner in a lawsuit alleging infringement of the ’563 Patent on October 4, 2012. The Petition in the instant proceeding was filed March 14, 2014, more than one year after the complaint was served.  Under 35 U.S.C. § 315(c), the one year time bar does not apply to a person’s request to “join as a party to [a previously instituted] inter partes review.”  Petitioner filed a Motion to Join.  However, the Board found that while the time bar does not apply to the party, it does apply to the petition.  The dissent disagreed with this reading of the statute and believes that if joinder were appropriate, the time bar would not apply.

Target Corporation v. Destination Maternity Corporation, IPR2014-00508
Paper 18: Decision Denying Motion for Joinder
Paper 20: Decision Denying Institution of Inter Partes Review
Dated: September 25, 2014
Patent: RE43,563 E
Before: Lora M. Green, Thomas L. Giannetti, Jennifer S. Bisk, Michael J. Fitzpatrick, and Mitchell G. Weatherly
Majority Opinion written by: Fitzpatrick
Dissent written by: Green with Giannetti joining
Related Proceedings: Destination Maternity Corporation v. Target Corporation et al., No. 2:12-cv-05680-AB (E.D. Pa.); IPR2013-00530; IPR2013-00531