Authored by Michelle Carniaux and Michael E. Sander
According to 37 C.F.R. § 42.122(b), “any request for joinder must be filed . . . no later than one month after the institution date of any inter partes review for which joinder is requested.” However, in at least one case, a motion for joinder was granted even though it was filed after the one month deadline.
Sony Corporation of America et al. (“Sony”) and Avaya Inc. (“Avaya”) filed separate petitions for inter partes review (“IPR”) of the same patent. (IPR2013-00092, IPR2012-00071). Avaya’s petition was granted, but Sony’s petition was denied. Within one month of the grant of Avaya’s petition, Sony filed a second petition for IPR along with a motion to join the Avaya IPR. (IPR2013-00386). The Board did not rule on the substantive merits of Sony’s second petition for IPR, but said, among other things, that the second petition for IPR raised too many new grounds (compared to those raised in Avaya’s IPR), and denied both the joinder motion and Sony’s second petition for IPR.
Sony then filed a third petition for IPR with a motion to join Avaya’s IPR. (IPR2013-00495). The third petition for IPR raised only the same grounds as those upon which trial had been instituted in connection with Avaya’s IPR. However, the third IPR was filed more than one month after the decision instituting inter partes review in Avaya’s IPR proceeding. Ordinarily, under 37 C.F.R. § 42.122(b), such a late filing would lead to an automatic rejection, but the Board granted the joinder motion, stating that:
We agree with Network-1 and Avaya that Petitioners’ request for joinder was filed after the one-month period set forth in 37 C.F.R. § 42.122(b). . . . [However,] [u]nder 37 C.F.R. § 42.5(b), the Board “may waive or suspend a requirement of [of the rules] and may place conditions on the waiver or suspension.”
The Board’s decision to grant joinder was made for three reasons. First, the Board noted that Sony’s third petition for IPR raised only arguments and grounds that were substantively identical to the arguments and grounds in Avaya’s proceeding; thus, there would be “no new issues beyond those already before the Board.” Id. at 4. Second, procedurally, Sony agreed to an “understudy” role in the IPR. Specifically:
Petitioners will not file additional written submissions, nor will they pose questions at depositions or argue at oral hearing without  prior permission . . .. Only in the event that at least one party settles will Petitioners seek to become active in the joined IPRs.
Id. at 6.
Finally, the Board noted that Sony had diligently tried to initiate IPR twice before, and that this factor weighed in favor of granting the motion.