Takeaway: Majority opinion of enlarged panel determined that the Board has discretion to grant a motion for joinder of two petitions by the same party that includes the same ground of unpatentability, at least where the second petition is fixing a procedural error in the first petition.

In its Decision, the Board granted Petitioners’ Request for Rehearing of the Board’s decision not to institute inter partes review of the ‘349 patent. In granting the rehearing, the Board also reversed its previous decision on institution and instituted the challenge to claims 1-3, 8, 9, 12, 16, and 19 as anticipated by Hideji, and joined this proceeding with IPR2014-01121.

The Petition in this proceeding was filed on February 20, 2015 concurrently with a motion to join this proceeding with IPR2014-01121, which was instituted on January 21, 2015. Accordingly, the motion for joinder was timely filed no later than one month after institution in IPR2014-01121. After a Patent Owner Preliminary Response and an authorized Petitioner Reply, which was limited to joinder issues, the Board “determined that Petitioner established a reasonable likelihood of prevailing in showing the challenged claims as anticipated by Hideji, but denied institution under 35 U.S.C. § 315(b).”

In the request for rehearing, Petitioner contended that “the Board abused its discretion in declining to adopt the broader interpretation of the phrase ‘join as a party’ in 35 U.S.C. § 315(c), as set forth in Target [Corp. v. Destiny Maternity Corp., Case IPR2014-00508 (PTAB Feb. 12, 2015) (Paper 28)].” Patent Owner argued that the Board’s decision not to institute “was not an abuse of discretion, but at most reflects a ‘reasonable difference of opinion’ amongst judges on the Board,” and “that the Board’s decision in Target is not precedential.” The Board concluded “that § 315 (c) permits the joinder of any person who properly files a petition under § 311, including a petitioner who is already a party to the earlier instituted inter partes review,” and “that § 315 (c) encompasses both party joinder and issue joinder, and, as such, permits joinder of issues, including new grounds of unpatentability, presented in the petition that accompanies the request for joinder.”

The Board noted that whether to grant joinder is within the Board’s discretion, and that the Board must make its decision factoring in “the just, speedy, and inexpensive resolution of every proceeding.” Patent Owner argued “that joinder should be denied due to the prejudice to Patent Owner in light of (1) the scheduling of oral argument in IPR2014-01121 for October 16, 2015; (2) Patent Owner’s substantial time and effort expended in developing a case of non-obviousness in response to the grounds instituted in IPR2014-01121; and, (3) Patent Owner’s potential need to file a motion to amend upon institution of additional grounds of alleged unpatentability.” Patent Owner also argued that equitable considerations weigh against joinder because, among other reasons, the Petition involves “an attempt to correct a fatal misstep entirely attributable to a petitioner after the expiration of the 315(b) bar.” The Board determined that the Petition raised one ground of unpatentability, and that the ground was previously raised and denied institution in IPR2014-01121 not on the merits, “but because Petitioner failed to include an attesting affidavit with the English translation of Hideji, counter to the requirement set forth in 37 C.F.R. § 42.63(b). The Board had denied motions in IPR2014-01121 to submit corrected exhibits, because Petitioner had not demonstrated that the failure to include the required affidavit was a clerical mistake.

The Board determined that the public interest “would be served in this case more fully by considering the merits of the asserted ground of unpatentability based on Hideji rather than by denying consideration” for failing to submit the requisite attesting affidavit. With respect to the impact of joinder, Petitioner accepted a reduced period of time to reply to Patent Owner’s Response and is willing to accommodate reasonable scheduling requests by Patent Owner.

The Board distinguished this case from others on the fact that Petitioner is not attempting to cure a deficiency of the merits of a ground asserted in the prior Petition by filing a second Petition, and Petitioner is not seeking to introduce additional grounds based on additional prior art through a second petition. Accordingly, the Board granted the Motion for Joinder and granted institution based on the granted rehearing, because the Board determined that it had abused its discretion in denying joinder and institution in its decision on institution.

Two judges dissented, stating that “neither the plain language of §§ 315(b) and 315(c), nor their legislative history, supports the statutory construction applied by the majority.” The dissent believes the majority reads too much into § 315(c)’s use of the word “any” and fails to consider the meaning of “any person” within the full context of other language in the statute. Specifically, the dissent believes that “any person” is constrained by § 315(c) to be anyone who can be “join[ed] as a party.” The dissent further notes that the legislative history provides that the one-year statutory bar of § 315(b) was intended to limit the harassment potential of inter partes reviews that was present in inter partes reexamination. Ultimately, the dissent believes that the majority exercised discretion it does not possess, to endorse “an end-run around a statutory bar that is contrary to Congressional intent and unsupported by the statute or its legislative history.”

Zhongshan Broad Ocean Motor Co., Ltd., Broad Ocean Motor LLC, and Broad Ocean Technologies, LLC v. Nidec Motor Corporation, IPR2015-00762
Paper 11: Decision Granting Request for Rehearing, Instituting Inter Partes Review, and Granting Motion for Joinder
Dated: October 5, 2015
Patent: 7,626,349
Before: Sally C. Medley, Justin T. Arbes, Benjamin D. M. Wood, James A. Tartal, and Patrick M. Boucher
Written by: James A. Tartal
Dissent by: Patrick M. Boucher (Benjamin D. M. Wood joining)
Related Proceedings: IPR2014-01121