Petitioner Not Allowed To Use Joinder To Add New Issues To Instituted Inter Partes Review

In two separate decisions, the Patent Trial and Appeal Board (the board) denied Target’s motion for joinder by a 3­2 vote and, denied institution of the inter partes review as being time­barred.

Joinder

Target previously had petitioned for inter partes review of the ‘563 patent. Target later filed another petition for the same patent and simultaneously moved to join the new proceeding with the already instituted IPR.

The board began by reviewing the joinder statute, which allows any person who properly files a petition to join an inter partes review, subject to the director’s discretion. The board interpreted the statute narrowly, finding that it only allows the joining of a person and not new issues in another petition. Because Target already was a party to the IPR proceeding, it could not be joined to that proceeding.

The dissent argued that the majority’s interpretation of 35 U.S.C. § 315(c) was nonsensical since the statute also require the joining party to file its own petition. The dissent also relied on the board’s prior rulings that consistently have allowed joinder of additional grounds by the same party. After presenting its own statutory construction analysis, the dissent determined that joinder of additional grounds by the same party is permissible.

Timeliness

The patent owner had served its patent infringement lawsuit on Target on October 4, 2012. Target filed the subject petition on March 14, 2014, more than one year after the Complaint. 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.” Although Target moved for joinder, the board found that while the time bar does not apply to the party, it does apply to the petition. The dissent disagreed with the majority’s reading of the statute, believing that if joinder appropriate, the time bar would not apply.

Target Corp. v. Destination Maternity Corp., IPR2014­00508, Paper No. 18 (PTAB Sept. 25, 2014); Target Corp. v. Destination Maternity Corp., IPR2014­00508, Paper No. 20 (PTAB Sept. 25, 2014).