Overcoming Common Arguments Against Joinder of IPRs

A review of patent owners’ Oppositions to Joinder shows three common arguments against joining inter partes reviews: the lack of availability of issue joinder, the failure of joinder to simplify issues before the Board, and the inequity of allowing joinder.  This post explores counter-arguments which can be used by a Petitioner when bringing a Motion for Joinder of IPRs

The joinder of inter partes reviews is left to the discretion of the Patent Trial and Appeals Board (“the Board”). 35 U.S.C. § 315(c) (“the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.).

The Board has generally recognized two types of joinder. First, so-called “party joinder” occurs when a second petitioner attempts to join the inter partes review of a first petitioner. This type of joinder has been widely recognized by the Board as falling within the ambit of § 315(c). The second type of joinder is so-called “issue joinder,” where the same petitioner attempts to join a second petition with a prior-instituted trial. Issue joinder has been controversial at the Board, with several decisions holding that § 315(c) does not permit issue joinder. However, the recent decision by a seven-member expanded panel in Target Corporation v. Destination Maternity Corporation appears to provide strong weight in favor of allowing issue joinder under § 315(c). Case IRP2014-00508 (PTAB Feb. 12, 2015) (Paper 28).

Issue joinder has been used by some petitioners to bringing new petitions for inter partes review after the one-year statutory bar set out in 35 U.S.C. § 315(b). Once trial is instituted on a first petition, a petitioner can file a second petition within on month with a motion for joinder. 37 C.F.R. § 42.122(b) Without joinder, the second petition would be time barred. However, with joinder the second petition can be used to challenge new claims, bring in new prior art, or otherwise bolster the petitioner’s arguments.

As the moving party, a Petitioner requesting joinder has the burden of proof to show that joinder is appropriate. The Board has developed a four-factor framework for evaluating motions for joinder. A motion for joinder must: (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 Sec. Solutions, Inc., Case IPR2013-00385 (PTAB Jul. 29, 2013) (Paper 17).

A review of patent owners’ Oppositions to Joinder shows three common arguments against joining inter partes reviews: the lack of availability of issue joinder, the failure of joinder to simplify issues before the Board, and the inequity of allowing joinder.

First, as indicated above, patent owners frequently argue that issue joinder is not permitted under 35 U.S.C. § 315(c). Patent owners’ recite the statute’s language that the director “may join as a party” as an indication that Congress intended to allow only party joinder. Although the decision in Target Corporation v. Destination Maternity Corporation has not been designated precedential or representative by the Board, petitioners should counter this line of argument by citing to the majority opinion in this case which held that issue joinder is permissible.

Second, patent owners commonly argue that joinder fails to simplify the issue before the board and/or that the schedule of the instituted trial does not support joinder. Petitioners must engage in a fact-specific rebuttal of these arguments. Among factors the Board will consider in evaluating the appropriateness of joinder are: the number of new claims challenged, the number of new prior art references introduced, the amount of discovery which has already taken place or is anticipated, the involvement of new parties or new expert witnesses.

In dealing with the issue of whether joinder will simplify the proceedings, petitioners should be mindful that the Board has indicated that a single, joined inter partes review is preferable to litigating some claims at the PTAB and other claims in District Court:

“[A] separate determination as to those claims and challenges not at issue in [the instituted IPR]…could result in a waste of judicial resources, increase the litigation costs to both parties, and be contrary to the purpose of ensuring a ‘just, speedy, and inexpensive resolution.’” Target, Paper 28, at 13.

When dealing with schedule issues, the Board expects a petitioner to propose a detailed schedule for the joined proceeding. It is important to remember that the one-year time requirement for issuing a final determination in an inter partes review may be adjusted for joined proceedings. 35 U.S.C. § 316(a)(11).

Finally, patent owners have often argued against joinder on equitable grounds, claiming that a petitioner has been insufficiently diligent in bringing its second petition. An instructive case on this issue – which weighs heavily in favor of a petitioner’s motion for joinder – is Amneal Pharmaceuticals LLC v. Endo Pharmaceuticals, Inc., Case IPR2014-1365 (PTAB Feb. 4, 2015) (Paper 13).

As with many cases requesting joinder, the timeline is important to understanding the Board’s ruling and its significance. In Amneal, patent owner Endo Pharmaceuticals asserted infringement of some claims of U.S. Pat. No. 8,329,216 in District Court proceedings by filing a Second Amended Complaint on January 17, 2013. Amneal filed a First Petition for inter partes review on January 16, 2014. The one-year statutory bar date under § 315(b) was January 17, 2014. Endo then amended its infringement contentions in the district court litigation to assert new claims of the ‘216 Patent on February 5, 2014.

On July 25, 2014, the Board instituted trial on Amneal’s First Petition. On August 22, 2014, Amneal then filed a Second Petition to challenge the claims which Endo asserted in its amended infringement contentions of February 2, 2014 (i.e. to challenge claims asserted after the one-year statutory bar date).

Without joinder, Amneal’s Second Petition would be time-barred. Endo opposed joinder on the grounds that Amneal hadn’t been sufficiently diligent in bringing the Second Petition before the Board. After all, Amneal had known of the newly-asserted claims for six months before bringing its Second Petition and Motion for Joinder. The Board rejected Endo’s argument:

“Regarding the alleged delay by Petitioner, we point out that we could not have instituted a second inter partes review proceeding based on a Petition filed after January 17, 2014, in view of the bar date under § 315(b), absent granting joinder under § 315(c). Nor could we grant joinder in the absence of another instituted case to join, which did not occur in [the first petition] until we instituted a trial in that case on July 25, 2014. As required under 37 C.F.R. § 42.122(b), Petitioner filed its Joinder Motion within one month after institution of a trial on that date.”

The Board’s decision in Amneal provides a powerful rebuttal to a patent owner’s argument that joinder is unwarranted due to petitioner’s delay in bringing a second petition.