The Patent Trial and Appeal Board’s decision last week allowing for parties that bring one America Invents Act review petition to file a subsequent petition raising different issues and join them into one proceeding may give petitioners strategic benefits, such as prolonging a stay in parallel district court litigation or firing back against an amended complaint, attorneys say.
A split five-judge PTAB panel granted a request for rehearing by Zhongshan Broad Ocean Motor Co. Ltd. and two related entities of the board’s previous refusal to institute an inter partes review of a heating and cooling patent held by Nidec Motor Corp. The expanded panel held that the initial panel, which found that Zhongshan’s IPR petition was filed too late and couldn’t be joined with an earlier filed petition, relied on an “erroneously narrow” interpretation of 35 U.S.C. Section 315(c) and wrongly held that parties can’t join their own petitions.
“There has been a lack of clarity around the joinder issue,” said Erik Belt, an intellectual property litigator at McCarter & English LLP and incoming president of the Boston Patent Law Association. “This decision resolves the issue that a single petitioner who files multiple petitions as to the same patent may get those petitions joined.”
More disputes over joinder are likely to continue to arise at the PTAB, particularly over the timing of the motions for joinder and when the petitioner wants to raise additional grounds in the second petition, according to experts.
“If you’re playing in this sandbox of patent litigation and associated inter partes reviews and covered business method reviews, you’re always looking at different strategy options to fit what the goals are for your client, no matter what side you’re on,” Belt said. “This decision is one more arrow in the quiver that lawyers are going to consider whether they are representing a patent challenger with multiple petitions or a patent owner. … Instead of getting simpler, the proceedings are getting more complex.”