IPR Spotlight Series: Strategically Using Requests For Joinder In IPR

Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) became available on September 16, 2012 as a post-grant review procedure to challenge the patentability of issued claims based on prior art patents and publications. To help navigate the uncharted waters of this procedure, each edition of IP Buzz- Post Grant Practice will include an installment of our new IPR Spotlight Series, where we will feature a specific event on the IPR timeline, from filing the petition for IPR through oral hearing and final written decision. We will present an overview of the featured filing or procedure, along with practice tips and strategy informed by recent PTAB decisions, statistics, and practical experience. In our fourth IPR Spotlight installment, we focus on strategically using requests for joinder in IPR.

Part 4: Strategically Using Requests for Joinder in IPR

The Leahy-Smith America Invents Act (AIA) permits joinder of like review proceedings involving the same patent. For instance, an IPR of a particular patent may be joined with another IPR for the same patent, or a post-grant review (PGR) of a particular patent may be joined with another PGR of the same patent. Requests for joinder are commonly used by joint defendants in district court patent litigation to ensure that an IPR proceeding will continue even if the patent owner settles with one defendant involved in the IPR. However, there are many other scenarios in which both petitioners and third parties can use joinder to their advantage during IPR.

Joinder 101

After an IPR has been instituted, the PTAB has discretion to join other parties that have filed a petition for IPR of the same patent,1 in addition to having broad discretion to "stay, transfer, consolidat[e], or terminat[e]" any other proceeding at the USPTO involving the patent pending resolution of the IPR.2 If a third party seeks to join an instituted IPR proceeding, that party must file its own petition for IPR, along with a request for joinder.3 The request should:

Set forth reasons why joinder is appropriate; Identify any new grounds of unpatentability asserted in the petition; Explain what impact, if any, joinder would have on the trial schedule for the existing review; and Address specifically how briefing and discovery may be simplified.4 A petition for IPR must be filed no more than one year after the date on which the petitioner is served with a complaint in district court alleging infringement of the patent.5 Interestingly, this time limit does...