The Uncertainty of Permissible Joinder in Inter Partes Review

8
Nov

The Uncertainty of Permissible Joinder in Inter Partes Review

The USPTO Director declared her interpretation of the proper scope of permissible joinder in inter partes review proceedings in her Brief for Intervener in the recently decided Federal Circuit’s case Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co, 868 F.3d 1013 (Fed. Cir. 2017). In the brief, the Director indicated that joinder of parties under 35 U.S.C. § 315(c) may include the joinder of issues as well as parties, even if the to-be-joined petitions are filed after the one-year bar date.1 Instead of resolving this issue, however, the Federal Circuit panel avoided ruling on the scope of permissible joinder and decided the case on other grounds.2 The reason this per curiam decision raised eyebrows was the concurrence of Judge Dyk, joined by Judge Wallach, specifically calling into question the Director’s broad interpretation of the joinder provision. This article looks at the current state of joinder in inter partes review proceedings through the Nidec case and the unasked question of whether the Federal Circuit can contravene the Director’s interpretation.

Background

The proper scope of permissible joinder in inter partes review proceedings has been subject to debate since the proceeding’s inception.3 The dispute centers on the interpretation of the joinder provision in 35 U.S.C. § 315(c), which states:

If the Director institutes an inter partes review, 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 language of “join as a party” and “any person who properly files a petition” have been construed as in tension with one another. The former suggesting that only a new party may be joined, and the latter potentially implying that a petitioner may join its own proceedings with new issues after the one-year bar date.4

The importance of this interpretation is found when considering that the one-year bar provision in subsection 315(b) does not apply to a request for joinder.5 Because a request for joinder may request joinder of new issues, a petitioner may seemingly raise new issues well beyond the one-year bar once it has an instituted petition. Thus, the broad interpretation of the joinder provision combined with the exception to the one-year bar provides an exception that could swallow the rule limiting petitions to within the one-year bar date.

The Director has firmly come out in favor of the broader interpretation of the scope of joinder.6 Because institution of a petition is charged to the Director, and not to the PTAB independent of the Director,7 the Director’s interpretation governs the institution decisions.8 Therefore, unless the Federal Circuit reviews the scope of joinder, it is likely that PTAB panels will continue to afford the broad interpretation of permissible joinder in inter partes review petitions.

The Nidec Case

Zhongshan Broad Ocean Motor Co. (“Broad Ocean”) filed an inter partes review asserting that the challenged claims of Nidec’s U.S. Patent No. 7,626,349 (the “’349 patent”) were anticipated by JP Pub. 2003-348885 (“Hideji”) or, alternatively obvious in light of Hideji.9 While the Board instituted review based on obviousness in light of Hideji, the Board denied institution on the anticipation grounds as a result of Broad Ocean’s failure to provide an affidavit as to the accuracy of the translation of Hideji.10 Broad Ocean then proceeded to file a subsequent petition for inter partes review that included the necessary affidavit and requested joinder with its first petition.11 A three-member panel denied the request to institute review on the anticipation ground in the second petition, because the petition was time barred under section 315(b).12 The Director granted a rehearing with an expanded five-member panel, which reversed the previous decision and interpreted section 315(c) to permit joinder of “any person,” even if it is the same petitioner who presents new grounds of unpatentability.13 Nidec appealed to the Federal Circuit.

While it may have appeared a ripe opportunity for the Federal Circuit to decide this conflict of interpretation of the joinder provision, the Federal Circuit panel declined to rule on the issue, and instead found the patent claims unpatentable as obvious in light of Hideji, the grounds instituted in the first petition.14 Notwithstanding the restraint of the panel, the concurrence directly calls into question the reasoning of prior PTAB panels and the USPTO Director.15 The concurrence found the scope of permissible joinder clear: “[T]he exception to the time bar for ‘request[s] for joinder’ was plainly designed to apply where time-barred Party A seeks to join an existing IPR timely commenced by Party B when this would not introduce any new patentability issues.”16 Even if the language leaves some room for ambiguity, the concurrence seriously doubts that “Congress intended that petitioners could employ the joinder provision to circumvent the time bar by adding time-barred issues to an otherwise timely proceeding.”17 Despite this clear rebuke of the Director’s position and the continuing practice in instituting petitions, the narrow construction of the joinder provision is merely dicta, as the Federal Circuit panel resolved the issue on unrelated grounds.18

Did Nidec change anything?

Despite the clear statement in the concurrence in Nidec, it is uncertain whether the Director’s interpretation, and thus, that of the PTAB, will be overturned. Petitioners will certainly continue to seek every vehicle to have challenged claims invalidated, including filing additional petitions on new issues and seeking to join those to an already instituted decision. Thus, we anticipate that this issue will continue to arise and may be subject to further appeal in the Federal Circuit. The question is whether the Federal Circuit will review and overturn this broad interpretation, or maybe more importantly, whether the Federal Circuit can review the interpretation of the joinder provision at all.

The seminal Supreme Court decision Cuozzo Speed Techs., L.L.C. v. Lee, 136 S. Ct. 2131, 2139 (2016) set the scope of reviewability of PTAB institution decisions in inter partes review petitions. There, the Court construed section 314(d) to bar challenges to the Patent Office’s institution decisions except in limited cases.19 For example, the Court left open the question of reviewability of decisions that may “implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond” institution. The precise scope of reviewability of institution decisions remains unclear, but the Federal Circuit has found that institution decisions based on the assessment of the one-year bar provision have been unreviewable, both prior to20 and after Cuozzo.21

The Federal Circuit has, however, granted a rehearing en banc to the panel decision in Wi-Fi One LLC v. Broadcom22 that may allow review of certain issues related to the one-year bar. Previously, the Board found that Broadcom’s petition was not time-barred because Broadcom was not in privity with a time-barred district court litigant. Wi-Fi One appealed the institution decision, continuing to argue that Broadcom was time-barred under the one-year bar based on the alleged privity. The Federal Circuit panel upheld its pre-Cuozzo decision rejecting each of Wi-Fi One’s arguments that this type of review was outside the scope of preclusion discussed in Cuozzo. The Federal Circuit reiterated its position that the preclusive effect of section 314(d) was not limited to those related to substantive patentability nor to section 314.23 Further, the Federal Circuit panel rejected the notion that denial of Wi-Fi One’s request for discovery on the time-bar issue is an example of the “shenanigans” Cuozzo suggested would be reviewable.24 The Federal Circuit has decided, however, to vacate this panel decision and rehear the case en banc.25 After oral arguments in May, it is still unclear how the Federal Circuit will rule.

If the Federal Circuit decides that granting an untimely petition is the type of agency “shenanigans” that can be appealed under the Cuozzo decision, it may be primed to decide on the scope of joinder issue, on which at least two judges have made their position clear. Because the scope of joinder controls the scope of the one-year bar, reviewability based on the untimeliness of a petition opens the door for the review of the scope of the joinder provision. Thus, if the en banc Federal Circuit overturns its earlier decision in Achates, it is possible that the scope of permissible joinder will be reviewed, thus putting the Director’s interpretation in jeopardy.

Practical Considerations

Currently, joinder motions are not subject to the one-year bar under § 315(b), and thus remain an attractive means to present new issues past the one-year bar. Despite the current circumstances, there may be other possibilities to consider before relying on this procedural method to present new issues. For example, a motion for joinder must be filed within one month of institution of the prior petition.26 As another example, joinder is not a matter or right, but is permissive.27 Thus, petitioners will continue to have to shoulder the burden to present the facts supporting joinder and should keep in mind these additional considerations even if the broad scope of joinder is maintained.

Given the effect that different interpretations of the joinder provision can have on pending IPR proceedings and parties, the value and impact of the concurrence in the Nidec case and the pending en banc decision in Wi-Fi One should not be underestimated. As we wait for the Federal Circuit to resolve the reviewability of time-bar issues and the scope of joinder, practitioners should tread carefully in advocating for or resisting joinder.

 

1 Brief for Intervenor at 32-39, Nidec, 868 F.3d 1013 (No. 16-2321), 2017 WL 151221.
2 Nidec, 868 F.3d at 1019.
3 See, e.g., Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, slip op. at 3-6 (PTAB Feb. 12, 2015) (Paper 28) (concluding that § 315(c) permits the joinder of issues by the same petitioner based on the statutory language, comparable other statutory language, the legislative history, and the statutory purpose); Cf., Skyhawke Techs., LLC v. L&H Concepts, LLC, Case IPR2014–01485, slip op. at 3-4 (PTAB Mar. 20, 2015) (Paper 13) (permitting joinder of only a person who is not already a party to the proceeding).
4 Id.
5 35 U.S.C. § 315(b).
6 Brief for Intervenor at 32-39, Nidec, 868 F.3d 1013 (No. 16-2321), 2017 WL 151221.
7 See 35 U.S.C. § 314(a) (“The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”); 37 C.F.R. § 42.4(a) (stating that the “Board institutes the trial on behalf of the Director”).
8 See, e.g., Facebook, Inc. v. Windy City Innovations, LLC, Case IPR2017-00709, slip concurrence at 1-3 (PTAB Aug. 1, 2017) (Paper 11) (Lee concurring) (despite disagreeing with the broad interpretation of joinder, concurring because the authority to institute the petition is an exercise of the Director’s authority on the Director’s behalf, and the Director has made her interpretation clear that it permits issue joinder).
9 Broad Ocean Motor, LLC v. Nidec Motor Corp., Case IPR2014-01121 (Petition July 3, 2014) (Paper 1).
10 Broad Ocean Motor, LLC v. Nidec Motor Corp., Case IPR2014-01121 (PTAB Jan. 21, 2015) (Paper 20).
11 Broad Ocean Motor, LLC v. Nidec Motor Corp., Case IPR2015-00762 (Petition Feb. 20, 2015) (Paper 3).
12 Broad Ocean Motor, LLC v. Nidec Motor Corp., Case IPR2015-00762 (PTAB July 20, 2015) (Paper 12).
13 Broad Ocean Motor, LLC v. Nidec Motor Corp., Case IPR2015-00762 (PTAB Oct. 5, 2015) (Paper 16).
14 Nidec, 868 F.3d 1013.
15 Nidec, 868 F.3d at 1019-20 (Dyk, J., concurring).
16 Id. at 1020.
17 Id.
18 Nidec, 868 F.3d at 1019.
19 Cuozzo Speed Techs., L.L.C. v. Lee, 136 S. Ct. 2131, 2139 (2016).
20 Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015).
21 Wi-Fi One, LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016) (vacated on reh’g en banc).
22 Id.
23 Id., at 1334-35.
24 Id., at 1335.
25 Wi-Fi One, LLC v. Broadcom Corp., 851 F.3d 1241 (Fed. Cir. 2017) (ordering the decision vacated and requesting briefs on the question of whether the court should overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review.)
26 See 37 C.F.R. § 42.122(b).
27 See 35 U.S.C. § 315(c).

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