Authored by Michelle Carniaux
The issue of whether the PTAB has the authority to join a subsequent petition to an ongoing inter partes review proceeding in which the petitioner is already a party appears to be settled, at least within the PTAB. We previously wrote about a Decision Denying Institution in Zhongshan Board Ocean Motor Co. et al. v Nidec Motor Corp., IPR2017-00762, in which, over a dissent, a two APJ majority found the PTAB does not have such authority. That majority decision, however, may be an example of APJs breaking ranks with the Patent Office. An expanded APJ panel recently granted Petitioner Zhongshan’s motion for rehearing, concluding that the denial decision was based on an erroneously narrow interpretation of 35 U.S.C. § 315(c). IPR2015-00762, Paper 16 (P.T.A.B. Oct. 5, 2015).
Section 315(c) is as follows:
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 under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of time for filing such a response determines warrants the institution of an inter partes review under section 314.
Citing to its February 2015 Target Corp. decision, the three APJ majority of the expanded panel 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.” Id. at 5. The majority also concluded that § 315(c) “encompasses both party joinder and issue joinder.” Id.
This issue has been briefed in connection with two Federal Circuit appeals.1 See 15-1342, 15-1343. In recent filings in those appeal proceedings, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office states that the USPTO has “consistently taken the position both in its briefing and its Board decisions that § 315(c) permits joinder of additional grounds by the same petitioner.”
1Disclosure: Kenyon & Kenyon LLP represents Appellee Sony Corporation in the Federal Circuit cases.