Tagged with Joinder

Concerns Raised Regarding PTAB Rules on Joinder and Expanded Panels

Author: Paula E. Miller
Editor: Jason E. Stach

In Nidec Motor Co. v. Zhongshan Broad Ocean Motor Co., No. 16-2321 (Fed. Cir. Aug. 22, 2017), the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s) decision that claims directed to a low-noise HVAC system were invalid as obvious.  In doing so, Judges Dyk and Wallach issued a concurring opinion calling into question the PTAB’s view that the joinder provision of 35 U.S.C. § 315(c) allows a petitioner to add time-barred new issues to its own timely-filed inter partes review.  The judges also questioned whether the PTAB may properly achieve uniformity in its decisions by expanding its panels, adding judges to the panels in the hope that those judges will tip the balance toward a different result than the original panel.  For more information on this case, tune in to our Federal Circuit IP Blog. Continue reading

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

Author: Alyssa J. Holtslander
Editor: Anthony A. Hartmann

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.”

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Expanded PTAB Panel Interprets Joinder Provision of § 315(c) as Allowing Two Bites at the Apple

Editor: P. Andrew Riley

In Target Corp. v. Destination Maternity, a majority of a five judge panel (“Original Panel”) of the Patent Trial & Appeal Board held that (1) an IPR petitioner may not file a second petition and join with its own prior instituted IPR proceeding, and (2) § 315(c) only allows joinder of parties not “issues” (e.g., different prior art grounds for unpatentability, different challenged claims). IPR 2014-00508, Paper 18 at 3-11 (Sep. 25, 2014). On February 12, 2015, a 4-3 majority of an expanded seven-judge panel (“Expanded Panel”) reversed both holdings. Paper 28 at 6-17 (“Expanded Panel Decision”).

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