The AIA sets a one year deadline from the date of service of a complaint to file a petition for inter partes review (IPR) of an asserted patent. See 35 U.S.C. § 315(b); see also 37 C.F.R. 42.101(b). The one-year bar, however, does not apply when another party joins an existing IPR. See 35 U.S.C. § 315 (c). In addition, the Patent Trial and Appeal Board (PTAB) has held that the one-year bar does not apply when joining two petitions by the same party where one petition is filed within the deadline and the other is not. See Microsoft Corp. v. Proxyconn Inc., IPR2013-00109, Paper 15 (P.T.A.B. Feb. 25, 2013).
A party can request joinder by filing a motion under 37 C.F.R. § 42.22 no later than one month after the PTAB institutes the IPR for which joinder is requested. See 37 C.F.R. § 42.122(b) and § 42.222(b). 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. See FAQ H5 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp. The decision to grant joinder is discretionary. See 35 U.S.C. § 315(c).
The PTAB recently reached opposite results on two motions for joinder with the same IPR. In Sony Corp. of America v. Network-1 Security Solutions, Inc. IPR2013-00386, Paper 16 (P.T.A.B. July 29, 2013), the PTAB denied Sony’s joinder motion because Sony’s IPR Petition raised numerous substantive issues not before the PTAB in the initial IPR, and joinder would cause lengthy delays to the ongoing IPR. In contrast, in Dell Inc. v. Network-1 Security Solutions, Inc. IPR2013-00385, Paper 17 (P.T.A.B. July 29, 2013), the PTAB granted Dell’s joinder motion because it did not raise any new issues, and would only minimally impact the existing proceeding.
Thus, to succeed on a joinder motion, a petitioner should avoid raising new issues that might complicate or delay an existing proceeding.
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