Authored by Michelle Carniaux and Michael E.Sander
The PTAB continues to be split on the question of whether the PTAB has the authority to join an otherwise time-barred party to a inter partes review proceeding in which it is already a party. This week, over a dissent, a majority PTAB panel found that the PTAB does not have such authority.See IPR2015-00762, No. 12 Decision Denying Institution (P.T.A.B. Jul. 20, 2015). This same issue was addressed this past February by an expanded panel, with a 4 to 3 split decision coming to the opposite conclusion. See Target Corp. v. Destiny Maternity Corp., Case No., IPR2014-00508, No. 28 (PTAB Feb. 12, 2015).
If a petition for inter partes review is filed more than 1 year after the date on which the petitioner is served with a complaint alleging infringement of the patent, the petition is barred under 35 U.S.C. § 315(b). However, there is an exception for petitions filed with a motion for joinder. Section 315(c) provides that if the Director institutes an inter partes review, “the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition. . . .” See 35 U.S.C. § 315(c) (emphasis added).
Petitioner Zhongshan Broad Ocean Motor Co., Ltd. (“Zhongshan”) filed a first petition for inter partes review, but inadvertently omitted a necessary affidavit accompanying a certified translation. IPR2015-00762, No. 12, at 13. The proceeding was instituted as to some grounds, but the grounds of invalidity that relied on the translation were denied because the translation lacked the proper affidavit. Id. To correct the issue, Zhongshan filed a second petition, this time with the correct affidavit. Id. However, the second petition was filed more than one year Zhongshan was served with a complaint for patent infringement. Id. at 11; see also 35 U.S.C. §315 (b). Accordingly, Zhongshan filed the second petition along with a motion to join the instituted proceeding, pursuant to 35 U.S.C. § 315(b) and (c).
The panel majority denied Zhongshan’s motion for joinder, and denied the second IPR petition as untimely. IPR2015-00762, No. 12, at 15. They found that § 315(c) permits the PTAB to join to a proceeding an otherwise time barred person only if that person is not already a party to the proceeding. That is, “a person cannot be joined as a party to a proceeding in which it is already a party.” Id. at 13. Administrative Patent Judge Tartal dissented, arguing that § 315(c) permits joinder of any person who properly files a petition, “including a petitioner who is already a party to the earlier instituted inter partes review.” Id. dissent at 1.1
The issue of whether § 315(c) permits both party joinder and issue joinder is currently being briefed at the Federal Circuit, see 15-1342, 15-1342.
1Disclosure: Kenyon & Kenyon LLP is representing Appellee Sony Corporation in the aforementioned Federal Circuit cases.