By Ben Snitkoff
Under the America Invents Act (AIA), parties to an Inter Partes Review (IPR) or Post Grant Review (PGR) may move to join pending IPR or PGR proceedings. See 37 C.F.R. § 42.122 (for IPR), and 37 C.F.R. § 42.222 (for PGR).
The regulations provide, in part:
(b) Request for joinder. Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under §42.22, no later than one month after the institution date of any inter partes review for which joinder is requested. The time period set forth in §42.101(b) shall not apply when the petition is accompanied by a request for joinder.
In addition to the efficiencies that come with consolidation of proceedings, a petitioner may use the joinder rules to get around the filing deadline laid out in § 42.101(b). The regulations prevent that party from filing a new IPRs and PGRs more than a year after the date the petitioner was served with a complaint for patent infringement. However, if that petition is filed with a motion to join a pending review proceeding, the petitioner can avoid that deadline. In order to take advantage of this, there must already be a pending proceeding (i.e. an earlier petition must have been timely filed and a instituted).
The Board has stated that the moving party has the burden of showing why joinder is appropriate:
A motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified.
Dell Inc. v. Network-1 Soln. Inc., IPR2013-00385, p. 4.
In the Dell case, Dell filed a petition for inter partes review along with a motion for joinder. Both the patent owner and petitioner (Avaya) in the earlier-filed IPR opposed Dell’s motion. Dell’s petition raised no new grounds of unpatentability, and “Dell’s arguments regarding the asserted prior art references . . . appear[ed] to be identical to those made by Avaya.” Id. at 7. Given that there would be no new grounds of unpatentability asserted, the Board allowed Dell’s motion to join. Dell consented to Avaya retaining “control over the proceeding,” but retained the ability to depose both the expert witnesses and patent-owner’s witnesses. Id. at 8-9.
While filing an mirror-image petition allowed Dell to join in the IPR, potential petitioners must weigh whether they are comfortable being tied to someone else’s arguments, particularly given the preclusive effect of IPR on subsequent district court proceedings. 35 USC § 315(e)(2).
Motions for joinder in IPRs have also been allowed where there was not identity of the issues asserted. In Ariosa Diagnostics v. Isis Innovation Ltd., IPR2013-00250, the Board joined a newly-filed petition with a pending proceeding with the same parties. The new petition stated new grounds for invalidation of the patent that was targeted in the first petition.
However, motions for joinder may be denied where they add new claims, not previously at issue, particularly when that would add a new party, additional claim construction, and other issues not raised in the earlier-filed petition. See NetApp, Inc. v. PersonalWeb Tech., LLC, IPR2013-00319, p. 5.
In summary, motions for joinder can serve as an option to conserve resources, potentially add new grounds to a petition, or to join an existing petition as a new party with the same claims. But these petitions still bear a hefty filing fee, and additional ongoing fees.