The Board continues to grapple with the issue of joinder where a party seeks to join a petition that would otherwise be time-barred with an earlier-filed petition. In Zhongshan v. Nidec Motor, an expanded 5-judge panel–with two members dissenting–allowed Petitioner to join a petition with an earlier (partially denied) petition which had been filed by the same petitioner, involving the same prior art. After allowing joinder, the Board instituted trial on the previously-denied grounds. See IPR2015-00762, now combined with IPR2014-01121, Paper 67. In short, this expanded panel, like some others before it, decided that 35 U.S.C. § 315(c) allows joinder of issues, not just joinder of parties. As noted by the dissent, this allows for a way around the one-year time bar imposed by § 315(b).
Some explanation of this proceeding’s relatively complicated procedure history provides helpful context. Petitioner originally challenged the validity of the patent-in-issue in IPR2014-01121. Trial in that case was instituted on January 21, 2015, but the petition was denied in part. The denial was, according to the Board, “not on the merits, but because Petitioner failed to include an attesting affidavit with the English translation” of the prior art, as is required by Rule 42.63(b). One month later (the deadline imposed by Rule 42.122(b)), Petitioner filed a motion for joinder along with another petition which included the required translation attestation.
The Board initially denied that second petition based on the one-year statutory bar. Petitioner then sought rehearing, which resulted in this decision from the expanded panel. Here, a 3-judge majority determined the joinder statute (§ 315(c)) allows joinder of issues, not just parties, even when the joinder allows a petitioner to avoid the one-year deadline. Noting that joinder is discretionary, the Board found that institution here was within the public interest, relying on the fact that the petition did not add new prior art over the first petition, but rather corrected a technical deficiency (as opposed to trying to cure a deficiency in the merits).
The 2-judge dissent argues the institution was contrary to the clear language of §§ 315(b) and (c), particularly arguing that the joinder statute (§ 315(b)) should be considered limited by both the time bar of § 315(c) and by § 314(c)’s limitation to one who can be “join[ed] as a party.” The dissent also argued that allowing this subversion of the one-year bar is contrary to Congress’s intent to fashion the IPR statute so as to avoid serial filings against patentees (as can happen in reexaminations).
As of this posting, the Zhongshan decision has not been identified as precedential. So, this may not be the Board’s final word on this issue.