Denying Institution of Inter Partes Review and Denying Motion for Joinder IPR2014-00695


Takeaway: Depending upon the judges on the panel, a petitioner may not be allowed to join a newly-filed petition to an instituted proceeding that addresses different challenges to the same patent where it is already a petitioner, either on a statutory basis or based on the Board’s discretion.

In its Decision, the Board denied Petitioner’s Motion for Joinder, and denied institution of trial, because the Petition was not filed within the time limits imposed under 35 U.S.C. § 315(b). Petitioner had previously filed a petition for inter partes review of the ’417 Patent in IPR2014-00100, which was instituted. Petitioner filed its Joinder Motion with Second Petition within one month of institution of IPR2014-00100, as required by 37 C.F.R. § 42.122(b). The Joinder Motion with Second Petition was filed more than one year after Petitioner was served with a complaint alleging infringement of the ’417 Patent.

The Board began by reviewing the joinder statute, which is an exception to the bar against filing a petition more than one year after the petitioner is served with a complaint alleging infringement of the patent. Thus, the Second Petition is time barred, unless joinder is granted. The Board noted that the decision to grant joinder is discretionary, and the Board considers just, speedy, and inexpensive resolution of every proceeding.

The Board was not persuaded that joinder was justified in this instance, because it represented a “second bite at the apple” for Petitioner. The Board considered that the 35 U.S.C. § 315(b) bar would apply absent joinder when determining whether to grant joinder. The Board also considered the public interest in securing “the just, speedy, and inexpensive resolution of every proceeding.

With regard to the “speedy” consideration, the Second Petition included two grounds previously asserted in IPR2014-00100, as well as three new grounds relying on two additional references. If joinder were granted, Patent Owner would be required to respond to these additional grounds, which would delay the IPR2014-00100 proceeding.

With regard to the “just” consideration, the Board noted that Petitioner created its own 35 U.S.C. § 315(b) bar situation by filing the Second Petition when it did. Absent the bar issue, the second could proceed on its own schedule if needed. In the Joinder Motion, Petitioner indicated that it received Patent Owner’s Infringement Contentions in the related district court case on February 18, 2014, after Petitioner filed its First Petition, and after the 35 U.S.C. § 315(b) bar applied. Petitioner contended that the Infringement Contentions included a claim construction from a different district court that led Petitioner to reassess its First Petition and to conduct an additional search that led to the additional grounds of unpatentability in the Second Petition. Petitioner attempted to submit the newly discovered references and the Infringement Contentions in the proceeding by a Request for Authorization to File a Motion to Submit Supplemental Information in IPR2014-00100. However, that request was denied, because submitting supplemental information as a vehicle to respond to a possible position that another party may take in the future was improper and that Petitioner may not raise a new ground of unpatentability after institution of trial.

Lastly, the Board noted that the “reasonable likelihood” standard places a burden on Petitioner to make its case, taking into consideration possible contentions that Patent Owner may assert at a later time, whether it be in relation to claim construction or otherwise. Thus, regardless of whether Petitioner was aware of Patent Owner’s claim construction position before the time bar, Petitioner had the burden to anticipate reasonable claim construction positions, and adequately address such positions in its Petition as needed. Further, the claim construction ruling raised in the Infringement Contentions was publicly available six months prior to Petitioner filing its First Petition.

Because joinder was denied, the Second Petition was time barred. Thus, institution was denied.

One judge on the panel concurred in the decision to deny joinder and institution, but for a different reason. The concurrence argued that 35 U.S.C. § 315(c) does not refer to the joining of petitions, but rather joining of a petitioner. Accordingly, joinder is not permissible where the same Petitioner attempts to join an additional petition. Similarly, the concurrence further argues that because 35 U.S.C. § 315(c) relates to joinder of a petitioner, and not joinder of petitions, the second sentence of 35 U.S.C. § 315(b) only applies to a request to join an inter partes review as a party. Accordingly, 35 U.S.C. § 315(b) bars the institution of the Second Petition, because it was filed more than a year after Petitioner was served with a complaint alleging infringement, and Petitioner is not requesting to join, as a party, to an already-instituted inter partes review of the same patent.

Medtronic, Inc. and Medtronic Vascular, Inc. v. Endotach LLC, IPR2014-00695
Paper 18: Decision Denying Motion for Joinder and Denying Institution
Dated: September 25, 2014
Patent 5,593,417
Before: Jacqueline Wright Bonilla, Michael J. Fitzpatrick, and Hyun J. Jung
Majority Opinion written by: Bonilla
Concurrence written by: Fitzpatrick
Related Proceeding: IPR2014-00100