United States: PTAB Allows Petitioner To Join Its Own Previously Filed Inter Partes Review

Last Updated: March 6 2015
Article by Don Daybell and Elena Garcia

In Target Corp. v. Destination Maternity Corp., IPR2014-00508, the Patent Trial and Appeal Board (PTAB) granted Target Corporation's Request for Rehearing on its previously denied Motion for Joinder, and ultimately granted joinder. See IPR2014-00508, Paper Nos. 28, 31. Target sought to join this proceeding with IPR2013-00531 ("First IPR"), involving the same patent and the same parties as IPR2014-00508 ("Second IPR"). See IPR2014-00508, Paper No. 3. The Second IPR challenged different claims, which were dependent on claims challenged in the First IPR. See Second IPR, Paper No. 31. Target sought joinder because the Second IPR was filed beyond the one-year bar on IPR filings, and would thus have been untimely pursuant to 35 U.S.C. § 315(b) absent grant of joinder.

The Patent Owner, Destination Maternity Corp. (DMC), unsuccessfully argued that joinder was inappropriate on a number of grounds. See IPR2014-00508, Paper Nos. 24, 31. Of primary interest here is DMC's argument that the IPR joinder statute was limited to permitting joinder of additional parties, and did not permit joinder by the same party of additional issues. See IPR2014-00508, Paper No. 24.

Ruling on the original Motion for Joinder, the majority of a five-judge panel1 held that 35 U.S.C. §315(c) permits joinder of "only a party" and not joinder of issues raised by the same petitioner in different filings. Second IPR, Paper No. 18, at 5. The majority emphasized that §315(c) does not authorize joinder of issues because the statute does not refer to the joining of a new petition to an existing proceeding; rather, the majority held that the statute's language (i.e., "any petitioner who properly files a petition...") referred to the joining of only a new petitioner. Id. at 3. The majority also relied on legislative history (a Final Committee Report) which stated that, under §§315(c) and 325(c), "[t]he Director may allow other petitioners to join an inter partes or post-grant review." Id. at 7. In reaching its decision, the majority noted but disagreed with several prior PTAB decisions that had granted joinder of additional issues by the same petitioner. Id. at 3-4.

A two-judge dissent argued that §315(c) does contemplate "joinder of issues as well as joinder of parties." Id., dissenting opinion, at 6. They relied on the word "any" in §315(c): "If the legislature meant to exclude joining of the same petitioner to an instituted inter partes review, it is unclear why the word 'any' was used in the statute, such that 'any person' who properly files a petition may be joined. Congress could have specified 'any non-party' instead of 'any person.'" Id., dissenting opinion, at 4. The dissent concluded by observing that the majority opinion essentially read the word "any" out of the statute, by limiting joinder to parties other than the current petitioner. Id.

After the denial of its Motion for Joinder, Target sought rehearing. Significantly, Target asked the PTAB to expand the panel on rehearing to seven or more judges. Id., Paper No. 22, at 15. DMC opposed this request, contending that designating an expanded panel to hear a rehearing request violated Due Process, because it "affects [DMC's] substantive rights . . . since it is being done here to change the outcome of this inter partes proceeding." Id., Paper No. 24, at 10-11. The Board, however, expanded the panel, holding that "[t]he inconsistencies in the interpretation of the statute presented by the Decision Denying Joinder in the instant proceeding are a sufficient reason for expanding the panel." Id., Paper No. 28, at 6. Then, the newly expanded panel of seven judges decided the issue of joinder in the rehearing.

A four-judge majority, which included the two dissenting judges and two new judges2, reversed the prior panel's ruling. Id., Paper No. 31. The rehearing majority relied on essentially the same points raised in the prior dissenting opinion. Id. The majority further held that rehearing was appropriate where the prior decision was based on an erroneous conclusion of law, even though there was no showing on rehearing that the prior decision "misapprehended or overlooked" any matters, as required by PTAB Rule 42.71(d). Second IPR, Paper No. 28, at 16-17; 37 C.F.R. § 42.71(d). The three judges who formed the majority in the prior decision denying joinder dissented from the rehearing decision on essentially the same grounds used in their prior majority decision. Id., Paper No. 31, dissenting opinion.

Conclusion

This decision sheds further light on how the PTAB may elect to address inconsistencies by individual panels in the interpretation of either the AIA statutes or the PTO's regulations. This decision also clarifies that rehearing is appropriate to correct erroneous interpretations of the law, even where there is no showing that the Board "misapprehended or overlooked" any matters in the prior decision.

This decision may also have a significant impact on the way parties view the IPR filing deadline. IPR petitions must be filed within 12 months of the date the petitioner is served with an infringement complaint, but there is an exception to that requirement for petitions that are joined with other petitions. However, by allowing a petitioner to join proceedings with its own previously filed IPR even after the 12-month period has elapsed, the PTAB gives the petitioner an opportunity to raise additional issues which would otherwise be barred.

Footnotes

1 A five-judge panel such as this is unusual for AIA proceedings, though not unprecedented. Although the PTAB has discretion to set the panel size, it most commonly uses a three-judge panel.

2 The Board did not articulate what criteria it used in selecting two additional judges for the panel.

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