The joinder provisions of inter partes review (IPR) proceedings can be a great tool to circumvent the 1-year IPR filing deadline following service of a complaint for infringement. However, grant of a joinder petition by the Patent Trial and Appeal Board (PTAB) requires recognition that the Board is loath to delay a final hearing date once it has a scheduling order in place.
Specifically, IPR joinder provisions permit the filing of a request to join a previous IPR proceeding by the same or a new petitioner where the IPR petitions would be otherwise time barred pursuant to 35 U.S.C. § 315(b). (Upon service of a complaint for patent infringement, a defendant has one year to file a petition for IPR of the patent in the USPTO.) For example, a second IPR request can be filed by the first petitioner or a first IPR request can be filed by a second petitioner.
In particular, the 1 year filing deadline does not apply to joining another party’s existing review (35 U.S.C. § 315(c); “the Director … may join as a party to that inter partes review any person who properly files a petition….”). Moreover, the PTAB has ruled that the 1 year deadline also does not apply when joining two petitions directed to the same patent by the same party — one filed within the deadline and the other which would be otherwise time-barred. Microsoft Corp. v. Proxyconn Inc., No. IPR2013-00109, Paper 15 (P.T.A.B. Feb. 25, 2013). In Microsoft, the second IPR request included claims not included in the first IPR request.
The decision to grant joinder is discretionary (35 U.S.C. § 315(c); 37 C.F.R. § 42.122). The Patent Office has indicated its intent to use its authority under § 315(c) “to encourage early requests for joinder and to discourage late requests.” 157 Cong. Rec. S1376. This discretion creates uncertainty for Petitioners.
What is the key factor that apparently guides the Board’s decision regarding granting or denying a joinder request? The Board’s primary focus in evaluating a joinder motion appears to be whether joinder will lengthen the review period and delay the hearing date. For a single IPR petition, the statute mandates that the Patent Office complete its review in one year, with the possibility of an additional six months in exceptional cases (35 U.S.C. § 316(a)(11); 35 U.S.C. § 141(c)). In practice, the Board has been reluctant at least in some cases to grant joinder if the joinder motion does not clearly detail how joinder will not result in delay.
In Sierra Wireless America, Inc. v. M2M Solutions LLC, IPR2016-00853, petitioner timely filed a first IPR petition, IPR2015-01823. The Board instituted review of only some of the patent claims from the first IPR request, and one month later petitioner then filed a second IPR petition directed to claims not instituted with the first IPR request. As the second IPR would have been otherwise time-barred, petitioner included a Motion for Joinder requesting that the two IPRs be joined.
In contrast to the Microsoft decision, the Board did not grant joinder in IPR2016-00853. In the denial of the joinder motion, the Board’s overarching concern was whether joinder would result in delay of the trial schedule set for the first IPR. In particular, the Board stated that the motion for joinder must “explain what impact (if any) joinder would have on the trial schedule for the existing review” . . . and that “Petitioner should specifically address how briefing and/or discovery may be simplified to minimize schedule impact.” The Board concluded that because “Petitioner does not explain specific modifications to the schedule that would be necessary to account for the additional issues, grounds, and prior art raised in the Petition. . . . Petitioner’s general statements of forfeiting ‘reasonable’ periods of its response period and accommodating ‘reasonable’ logistical and scheduling requests does not address sufficiently the impact joinder would have on the trial schedule of IPR2015-01823 . . .” IPR2016-00853, Paper 16 (P.T.A.B. Sept. 20, 2016).
Thus, a petitioner seeking joinder should make every effort to provide a detailed and comprehensive proposal regarding suggested modifications to the trial schedule for the pending IPR. An example of an area where IPR joinder is a frequently used litigation tool is where generic pharma petitioners seek to follow onto earlier filed IPRs against an innovator pharma patent to try to ensure invalidation of the patent (note that a motion for joinder must be filed no later than one month after the institution date of the first IPR petition. 37 CFR § 42.122(b)).
Details provided in the motion for joinder as to how the second IPR can be joined with the first IPR, without negatively impacting the existing trial schedule, are critical to successful grant of any joinder motion. Further, joinder-seekers should clearly describe to the Board the differences from a previous petition, including with respect to the claims, cited art, and evidence.