A party may join an already filed inter partes review (IPR) petition under 35 U.S.C. § 315(c). This may be done to avoid the one-year statutory bar or to ensure that the petitioner can maintain the IPR if the parties to the previously filed IPR settle.
But there is no right to joinder; 35 U.S.C. § 315(c) permits the Director to join a party “in his or her discretion.” In permitting joinder, the Patent Trial and Appeal Board (PTAB) considers whether joinder will unduly delay or detrimentally affect the previously filed IPR, and whether the new petitioner delayed filing its request for joinder. Thus, to facilitate joinder, parties often copy the petitions from the previously filed IPR, and explain that they will adhere to the established schedule and take a back seat or “understudy role” to the previous filer.
The PTAB has taken issue with joinder petitions where the petitions substantively deviate from the previously filed petition. For example, in ZTE Corp. v. Adaptix, Inc., IPR2015-01184 (PTAB July 24, 2015), the PTAB took issue with the Petitioner’s argument that it filed an “identical petition,” because the new petition relied on a new expert declarant. And even though the Petitioner argued that, if joined, it “will rely upon [the previous petitioner]’s expert, and will not offer additional expert testimony unless [the previous petitioner] terminates its involvement in the IPR,” id. at 4-5, the PTAB noted that if joined, “Patent Owner should have the opportunity to cross-examine Petitioner’s proffered expert,” thus “necessarily introduc[ing] a new expert declarant and potentially rais[ing] additional issues.” Id. For this reason, and the advanced schedule of the IPR, the PTAB denied joinder.
The PTAB has denied joinder in analogous scenarios as well. See, e.g., NetApp, Inc. v. PersonalWeb Techs., LLC, IPR2013-00319, Paper 18 at 5 (denying joinder because the petition challenged a new claim, and added new declarations and arguments); Sony v. Network-1 Security Solutions, IPR2013-00386, Paper 16 at 7 (denying joinder because the petition challenged a new claim, asserted new grounds of unpatentability, and asserted new prior art references); Unified Patents, Inc. v. PersonalWeb Techs., LLC, IPR2014-00702, Paper 12 at 5 (denying joinder because the patent owner may need additional discovery to determine the real-parties-in-interest).
Thus, a party that wishes to join a petition is more likely to succeed by filing a petition identical to the previously filed petition, even if that party is aware of other evidence or arguments. But what can be done with the new arguments or evidence?
Whatever is done, the PTAB has recently explained in International Business Machines Corp. v. Zitovault, LLC, IPR2016‐01851 (PTAB Mar. 20, 2017), that it should be done quickly. There, IBM successfully joined a petition previously filed by Amazon, using substantially the same petition. IBM then waited months, until after the patent owner responded to the petition, to file a second IPR petition using new references that it had been aware of prior to filing its first petition.
The PTAB denied institution, and declined to join the second IPR, noting that “Petitioner could have filed this Petition at the same time as the earlier petition, applying the new references,” rather than waiting until after the patent owner response. Id. at 8-9. Of note, the PTAB refused to give the Petitioner “the benefit of waiting to file this Petition and addressing [a claim construction] dispute with the new references it had knowledge of months earlier.” Id. at 9-10.
Thus, a party wishing to join a petition (who is not time-barred) should include all known references they intend to assert against a patent in multiple petitions filed simultaneously: one petition that is substantially similar to the previously filed petition, and one or more petitions raising new arguments.
Practitioners should take heed of the above decisions and the continuing evolution of PTAB and related Federal Circuit decisions regarding joinder.