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PTAB Restricts Joinder under 35 U.S.C. § 315(c) to Non-party Petitioners
Practical Law Legal Update 5-582-8926 (Approx. 4 pages)
PTAB Restricts Joinder under 35 U.S.C. § 315(c) to Non-party Petitioners
by Practical Law Intellectual Property & Technology
| Published on 29 Sep 2014 • USA (National/Federal) |
In Target Corp. v. Destination Maternity Corp., the US Patent Trial and Appeal Board (PTAB) parsed 35 U.S.C. § 315(c) to allow the joining of a petitioner to an inter partes review, but not the joining of an additional petition.
On September 25, 2014, the US Patent Trial and Appeal Board (PTAB or Board) issued a decision in Target Corp. v. Destination Maternity Corp., denying Target Corp.'s motion for joinder under 35 U.S.C § 315(c) (Case IPR2014-00508 (PTAB Sept. 25, 2014)).
Target filed a corrected petition for an inter partes review of certain claims of the US Patent No. RE43,563 E (the '563 patent). Target had previously filed two other inter partes review petitions for different, but overlapping, claims of the '563 patent. The PTAB instituted trial on all but one of the claims of the '563 patent that Target had challenged. Target then sought to have its corrected petition joined with the other petitions set for inter partes review. The PTAB denied the motion for joinder for the following reasons:
- 35 U.S.C § 315(c), on which the motion was based, refers to the joining of a petitioner, or a party, not the joining of a petition.
- Previously, the Board interpreted 35 U.S.C § 315(c) to permit joinder of issues in Ariosa Diagnostics v. Isis Innovation Ltd., reasoning that the statute does not directly prohibit joinder of issues by the same party (Case IPR2012-00022, (PTAB Sept. 2, 2014)). In this matter, however, the Board concluded that given the absence of express permission in the statute, one cannot presume that the statute grants this authority.
- Although the PTAB has previously granted joinder of an additional petition to an inter partes review trial, in the instant matter, it concluded that the statute unambiguously does not permit a person to join a proceeding in which it is already a party, nor does it permit joinder of petitions or issues.
- The relevant Final Committee Report supports the Board's reading of the statute because it states that the Director may allow other petitioners to join an inter partes or post-grant review (H.R. Rep. 112-98, 76, (2011)).
- Section 315(b) supports the Board's reading of § 315(c) because it institutes a time limit on petitions filed more than one year after the date that the petitioner is served with a complaint. It then noted that there is no such time limitation for requests for joinder filed under subsection (c). The Board concluded that its reading of § 315(c) was harmonious with the plain language of § 315(b) because subsection (b) institutes a one-year bar on inter partes review petitions but does not bar the petitioner's request to join as a party an already-instituted inter partes review of the same patent.
In their dissent, Administrative Patent Judges Green and Giannetti failed to find any language in the statute that directly prohibits joinder of issues by the same party and argued that if Congress wanted to exclude joinder of the same petitioner to an instituted inter partes review, it could have limited joinder requests to "any non-party" rather than the broad "any person" language included in the statute. The dissent also pointed out that the Committee Report is silent on joinder of issues under § 315(c).