Takeaway: Joinder may be appropriate, even when oral hearing in the previously instituted proceeding has already been held, where the delay was not in the petitioner’s control and where the petitioner was diligent and timely in filing its motion for joinder.

In its Decisions in IPR2014-00508 (the ’508 IPR) and IPR2014-00509 (the ’509 IPR), the Board granted Petitioner’s Motion for Joinder such that the ’508 IPR was instituted and joined with IPR2013-00531 and the ’509 IPR was instituted and joined with IPR2013-00533.

Petitioner had filed two Petitions for inter partes review, each Petition challenging one of the ’563 patent and the ’531 patent. After the Petitions were filed, Patent Owner produced a prior art reference (Asada) to Petitioner in the related district court litigation. As the Board noted, Petitioner’s Motions for Joinder were filed within one month after institution of the two previously-filed Petitions. The proceedings involved the same parties and the same challenged patents. With respect to the challenged claims and the asserted prior art, the ’508 IPR and the ’509 IPR challenged claims that depend from those challenged in the earlier-filed Petitions and only the Asada reference was being added.

Patent Owner first argued that joinder was not appropriate because new patentability analyses and substantive arguments beyond those of the previous proceedings were being presented. However, the Board noted that Petitioner “moved to limit the Petition to claims 1, 20, and 21” in the ’508 IPR (claims 1, 18, and 19 in the ’509 IPR) and that only two grounds were being instituted in each new IPR. Thus, the Board held that the grounds in the ’508 and ’509 IPRs “do not go substantially beyond those on which trial was instituted” in the prior respective proceeding.

Patent Owner also argued that joinder was inappropriate because “Petitioner did not propose a modified schedule, nor did it explain how the schedule could be reconciled with the schedule” in the prior proceedings. The Board acknowledged that “there is no way to reconcile the schedule in the instant proceeding with that in IPR2013-00531 [and IPR2013-00533] given that oral hearing has already been held in IPR2013-00531 [and IPR2013-00533].” However, the Board noted, the delays were outside of Petitioner’s control.

Patent Owner also argued that Petitioner had not established how joinder would promote efficiency and that several instituted claims were being re-challenged. However, the Board noted, as Patent Owner acknowledged, trial was being instituted on a limited number of claims and grounds.

The Board concluded that joinder was appropriate. As the Board explained: “The same patent and parties are involved in both proceedings. There is an overlap in the cited prior art. Petitioner has been diligent and timely in filing the Motion. And while some adjustments to the schedule will be necessary, many of those adjustments were due to the procedural history of this proceeding, and beyond Petitioner’s control.” Because oral hearing had already occurred, no scheduling order was issued. Instead, the Board ordered the parties to meet and confer regarding an expedited schedule in advance of a conference call to be held with the Board.

In the dissenting opinion, Judge Fitzpatrick, joined by Judges Bisk and Weatherly, argued that Section 315(c) “does not authorize joinder of proceedings.”

Target Corp. v. Destination Maternity Corp., IPR2014-00508, IPR2014-00509
Paper 31 (IPR2014-00508) Paper 30 (IPR2014-00509): Decision on Motion for Joinder
Dated: February 12, 2015
Patents: RE43,563 E (IPR2014-00508); RE43,531 E (IPR2014-00509)
Before: Michael P. Tierney, Lora M. Green, Joni Y. Chang, Thomas L. Giannetti, Jennifer S. Bisk, Michael J. Fitzpatrick, and Mitchell G. Weatherly
Written by: Green
Dissent by: Michael J. Fitzpatrick joined by Jennifer S. Bisk and Mitchell G. Weatherly
Related Proceeding: IPR2013-00531; IPR2013-00533