Standard Innovation filed a first petition for inter partes review of U.S. Patent No. 7,749,178 (the 178 patent) which the Board instituted on May 6, 2014 (IPR201400148, the 148 IPR). On June 5, 2014, Standard Innovation filed a second petition for inter partes review of the same patent (second petition), concurrent with a motion to join the second petition with the 148 IPR. This second petition was filed more than one year after petitioner was served with a complaint alleging infringement of the patentatissue. In such circumstances, inter partes review cannot be instituted unless it is joined with an earlier instituted proceeding pursuant to 35 U.S.C. § 315(c). Here, the board highlighted that “the decision to grant joinder is discretionary,” and in denying joinder, analyzed “the content of the petition, the impact on schedule [sic] including how petitioner proposes to deal with that impact, and other factors.” The board noted that the second petition sought review of five claims of the ’178 patent that were already denied institution in the 148 IPR, referring to it as a “second bite at the apple.” Indeed, the board stated that “[n]either the petition nor the motion for joinder presents cogent argument or evidence to explain why the grounds of unpatentability asserted in the petition could not have been asserted in the 148 IPR” and that “joinder would significantly expand the 148 IPR” (e.g., due to an increase in the number of claims, asserted grounds, and references to be considered). Thus, petitioner had not demonstrated why such an increased burden was warranted.
The board additionally mentioned a joinder issue that will likely arise again in future proceedings. Specifically, the board recognized that a “difference in opinion currently exists as to whether the board has discretion under 35 U.S.C. § 315(c) to allow joinder of a person to an ongoing inter partes review when, as here, that person is already a party to an ongoing inter partes review” (i.e., whether two petitions involving the same parties may be joined as compared to petitions involving different parties, but the same patent). Cf. Target Corp. v. Destination Maternity Corp., Case IPR201400508 (PTAB Sept. 25, 2014) (Paper 18); Ariosa Diagnostics v. Isis Innovation Ltd., Case IPR201200022 (PTAB Sept. 2, 2014) (Paper 166). The board in Standard Innovation declined to take a position on the issue, stating that “[e]ven if 35 U.S.C. § 315(c) does not permit joinder of a person to an ongoing inter partes review when that person is already a party to the ongoing inter partes review, the outcome in this case would be the same.” Given that multiple petitions are increasingly filed against the same patent, this issue is likely to arise again.
Standard Innovation Corp. v. Lelo, Inc., No. IPR201400907 (PTAB Dec. 1, 2014) [Kauffman, Bonilla, and Crumbley].