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.


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.


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.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
23 Jan 2019, Speaking Engagement, New York, United States

New York partner Rich Martinelli will be a featured panelist during the Society of Physician Engineers' event, "Intellectual Property Law & Tax Credits for Life Science Companies."

29 Jan 2019, Speaking Engagement, New York, United States

Please join Orrick partner Jay Jurata at this year's Joint NGMN and ITU Conference on January 29-30 in Geneva, Switzerland.

27 Feb 2019, Conference, Las Vegas, United States

Partner John Narducci will be discussing The Impact of the Tax Reform Act on Valuations at ABI’s Valcon 2019 Conference.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions