In a rare decision granting a petitioner’s request for rehearing, a twice-expanded panel of the Patent Trial and Appeal Board (PTAB or Board) reversed its earlier decisions denying institution of the inter partes review (IPR) proceeding and joinder with the petitioner’s earlier IPR proceeding. In doing so, the Board clarified that it is permissible to allow joinder of additional grounds by the same party. Target Corp. v. Destination Maternity Corp., Case IPR2014-00508 (PTAB, Sept. 25, 2014) (Green, APJ) (Fitzpatrick, APJ, dissenting). 

After filing an initial IPR petition in 2013, Target filed a second IPR petition after the § 315(b) one-year bar date had run.  The second petition, however, was filed within one month of the Board’s institution of the first IPR proceeding and was accompanied by a Motion for Joinder with that earlier proceeding.  In response to the Board’s concern with the issue of timing and potential effect on the existing schedule, the petitioner filed a Motion to Limit the Petition to simplify the issues presented and thereby facilitate joinder and minimize the burden on the patent owner. The petitioner’s new grounds focused on a foreign publication, which the petitioner contended was known to the patent owner and which had been requested from the patent owner in connection with federal court discovery, but which was withheld from the petitioner until after the first IPR petition had been filed and the § 315(b) bar date had posted.

In initially denying joinder, the Board construed the controlling statute, 35 U.S.C. § 315(c), and reasoned that because Target was already a party to the earlier-filed IPR proceeding, it could not be joined to that proceeding.  The denial of joinder resulted in the petition being time-barred under § 315(b).

In granting the rehearing request, the expanded panel of the Board agreed with the petitioner that the initial denial of joinder was based on an “erroneously narrow interpretation” of the joinder statute. According to the majority, the joinder statute allows the director to join “any person who properly files a petition under § 311 [i.e., the statue authorizing inter partes review].”  Since § 311 only excludes the patent owner from filing an IPR petition, the majority reasoned that Congress had only excluded the patent owner and not a petitioner in an already instituted review proceeding. The Board, noting that the word “any” in the statute may be defined as “one or more without specification of identification,” explained it was unclear why Congress would have used “any person” in the joinder statute if it meant to exclude joining the same petitioner to an instituted IPR. 

The dissent—which consisted of the three members of the initial panel—argued that majority’s decision essentially rewrote two subsections of § 315, read past the most relevant provision of the Congressional Final Committee Report of the America Invents Act, misinterpreted “ambiguous” statements by a single member of Congress (Senator Kyl), relied on non-binding prior Board decisions, and relied on the Board’s rules and the Office Patent Trial and Practice Guide instead of the binding federal statute. The dissent further argued that the majority read § 315(c) as if it granted discretion for the Board to act in any way not expressly prohibited by the statute, but it interpreted the statute instead to grant discretion for the Board to act only in ways that are stated expressly in the statute.  The stage may now be set for the U.S Court of Appeals for the Federal Circuit to weigh in on the issue.