Citing a PTO’s Intervenor Brief, the PTAB Grants Rehearing and Clarifies Scope of Joinder - Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp.

by McDermott Will & Emery

In a decision granting a petitioner’s rehearing request and joinder motion, an expanded panel of the Patent Trial and Appeal Board (PTAB or Board) reversed its earlier decisions, explaining that those decisions were based on an erroneously narrow interpretation of 35 U.S.C. § 315(c). Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., Case No. IPR2015-00762 (PTAB, Oct. 5, 2015) (Tartal, APJ) (Wood, APJ, dissenting). Over the dissent of two judges, the Board clarified that it is permissible to allow joinder of additional grounds by the same party, and in doing so cited the director’s Intervenor Brief filed in the Sony Corp. v. Yissum Research Dev. Co. case on appeal at the U.S. Court of Appeals for the Federal Circuit.

After filing an initial inter partes review (IPR) petition in 2014, challenging claims of a Nidec patent, Zhongshan filed a second IPR petition within one month of the institution of the earlier IPR proceeding but after the one-year bar of § 315(b) had run. The § 315(b) bar was based on an infringement action earlier brought by Nidec. The second petition alleged only a single ground of unpatentability: anticipation based on a Japanese patent publication that had also been presented in Zhongshan’s first petition. The second petition included an affidavit attesting to the accuracy of the English translation of the Japanese reference, an omission that was fatal to the same invalidity ground urged in the initial IPR petition.

In the initial panel decision denying joinder, the Board concluded that Zhongshan had established a reasonable likelihood of prevailing on their challenge of the claims on the ground of anticipation. However, according to the majority of the three-member panel, § 315(c) prevented joinder with the earlier proceeding so the second petition was time-barred under § 315(b). The majority explained that, in their view, “the phrase ‘join as a party’ indicates that only a person who is not already a party . . . can be joined to the proceeding.’”

In granting the rehearing request, an expanded panel of the Board agreed with the petitioner that the initial denial of joinder was based on an “erroneously narrow interpretation” of § 315(c). Citing to Target Corp. v. Destination Maternity Corp., the majority concluded that “§ 315(c) permits the joinder of any person who properly files a petition under § 311, including a petitioner who is already a party to [an] earlier instituted inter partes review.” The expanded Board panel also concluded that the joinder statute “encompasses both party joinder and issue joinder, and as such, permits joinder of issues, including new grounds of unpatentability, presented in the petition that accompanies the request for joinder.”

Practice Note: Perhaps the primary factor underlying the Board’s analysis was the PTO’s position on the interpretation of § 315(c) as explained in its intervenor brief filed in the Sony Corp. v. Yissum Research Dev. Co., a case on appeal at the Federal Circuit. As noted by the Board, “in an Intervenor Brief, the Office argued to the Federal Circuit that ‘the Board has consistently held [that] it . . . has the discretion to join IPR proceedings, even if § 315(b) would otherwise bar the later-filed petition, even if the petitions are filed by the same party.’”

The dissent—constituting the two-member majority of the initial panel—argued that the expanded panel majority’s decision, like that in Target Corp. v. Destination Maternity Corp., “used an expanded panel on rehearing to arrogate power beyond that granted by the Congress.” The dissent also argued that by reading too much into the word “any” as used in § 315(c), the majority’s decision “directly frustrates th[e] Congressional objective of curtailing avenues for harassment by sanctioning ‘repeated . . . administrative attacks,’” the prevention of which was the underlying objective of § 315(b).

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McDermott Will & Emery

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