Expanded Panel Grants Request for Rehearing Allowing Joinder to Correct a Prior Deficiency

In a rare expanded panel majority opinion, the PTAB granted a Request for Rehearing allowing for the institution and joinder of a second IPR petition filed by the same party that corrected an error in a first IPR petition. Zhongshan Broad Ocean Motor Co., Ltd., et al. v. Nidec Motor Corp., IPR2015-00762 (October 5, 2015) (Paper 16) at 9. The majority based its decision on 35 U.S.C. § 315(c), which allows “the Director, in his or her discretion, [to] 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 majority relied on another expanded panel’s majority decision in Target Corp. v. Destination Maternity Corp., IPR2014-00508 (February 12, 2015) (Paper 28) which analyzed the legislative intent of 35 U.S.C. § 315(c) and further held that the language of 35 U.S.C. §  315(c) regarding “any person who properly files a petition under section 311” does not exclude petitioners that are already a party despite the second petition being potentially time-barred by 35 U.S.C. § 315(b). Zhongshan at 3-5. In Target, the majority opinion relied on the use of “any person” in the statute as support that the legislative intent had not excluded the same petitioner. Target at 8. The Zhongshan majority opinion distinguished their decision from other situations in which joinder may be denied because, in this case, the error was not on the merits. Zhongshan at 7-8.

In a further rare occurrence for a PTAB decision, two members of the expanded panel filed a dissent arguing that the majority decisions expands the legislature’s intended scope of 35 U.S.C. § 315(c). Zhongshan (dissent) at 1. Specifically, the dissent explained that “any person” in 35 U.S.C. § 315(c) is constrained to those that can be “join[ed] as a party;” thus the statute is limited to the joinder of parties and does not encompass the joinder of issues.  Id.. The dissent further explains that the majority’s decisions frustrates the intent of the one-year statutory bar instituted in 35 U.S.C. § 315(b) by allowing for potential harassment of patent owners by repeated administrative attacks. Id. at 1-2.  This mirrors the rationale of the dissent in Target.  Target at 17.

As neither Target nor Zhongshan is precedential, there is no clear indication from the PTAB on the scope of the authority granted by the legislature with respect to joinder of IPR proceedings with different issues, filed by the same party and after the one-year statutory bar.