Section 315(c) of the America Invents Act (“AIA”) provides that if the Director of the U.S. Patent and Trademark Office (“USPTO”)

institutes an inter partes review, the Director, in his or her discretion, may 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.

35 U.S.C. § 315(c) (emphasis added). On its face, § 315(c) only authorizes the Director to “join as a party” to an instituted inter partes review (“IPR”) any person that is not already a party to the IPR proceeding. It would seem to be a simple matter of logic that a person cannot be “joined” to an instituted review “as a party” if that person is already a party to the instituted review. However, the Patent Trial and Appeal Board (“PTAB” or “the Board”) has held that the words “join as a party” in § 315(c) authorizes an existing party to join itself to its own case and add new issues. And since § 315(b) provides that the one-year time-bar for filing a petition does not apply to requests for joinder under § 315(c), the Board has held that these two sections allow a petitioner to add an otherwise time-barred claim to an existing IPR proceeding by allowing the petitioner to join itself as a party to a proceeding in which it is already a party.

When a panel of the Board has interpreted § 315(c) to only allow joinder of petitioners who were not already a party to the proceeding, the USPTO has convened expanded panels to reconsider the decisions and allow self-joinder. See, e.g., Target Corp. v. Destiny Maternity Corp., Case No. IPR2014-00508, slip op. (P.T.A.B. Feb. 12, 2015) (Paper 28) (expanded panel). According to the USPTO, any time a panel rejects self-joinder, the agency convenes an expanded panel to overturn the decision and allow self-joinder. In expanding panels to overturn decisions denying self-joinder, the USPTO stated, it “has acted to ensure that its pronouncements remain consistent on this issue.” Brief for Intervenor at 37, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013 (Fed. Cir. 2017), 2017 WL 151221.

Last year, in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Nidec appealed a final written decision by the Board in a case where an expanded panel allowed Broad Ocean to join itself as a party to its own IPR proceeding. 868 F.3d at 1014. About one month after the Board instituted an IPR on Broad Ocean’s first petition, Broad Ocean filed a second IPR petition with a motion to join the second petition to the first petition, pursuant to § 315(c). A panel of Administrative Patent Judges (“APJs”), in a 2-1 decision, declined to institute an IPR on the second petition. The majority of the panel determined that Broad Ocean filed its second petition more than one year after it had been served with an infringement complaint and therefore, the second petition was time-barred under § 315(b). Id. at 1015. The panel majority held that the exception to the time-bar for requests for joinder in § 315(b) did not apply because the joinder provision does not permit a party to join issues to a proceeding in which it is already a party. Id.

Broad Ocean filed a request for rehearing of the panel decision. Id. An expanded panel of five APJs granted Broad Ocean’s motion for rehearing and set aside the original panel decision, concluding 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 the earlier instituted [IPR]. We also conclude that § 315(c) 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.

Id. (citation omitted). Determining that the joinder statute allows joinder of issues by the same party, the expanded panel instituted review of the second petition and granted the request for joinder. Id. The expanded panel issued a final written decision determining the challenged claims unpatentable under § 103 as obvious over the references in the first petition and unpatentable under § 102 as anticipated by the reference in the second petition.

On appeal, Nidec challenged the Board’s joinder decision as well as the Board’s obviousness and anticipation determinations. Id. at 1016. The Director for the USPTO and Broad Ocean argued their interpretation of the joinder statute and also argued that the Board’s joinder determination is non-appealable in light of 35 U.S.C. § 314(d)’s bar of judicial review for institution decisions. Id. In its intervenor brief, the USPTO cited Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015) as prohibiting the Federal Circuit under 35 U.S.C. § 314(d) from reviewing the Board’s decision of whether § 315(b) bars the petitioner from filing a petition. Brief for Intervenor at 13-14, Nidec Motor Corp., 868 F.3d 1013, 2017 WL 151221. But the Federal Circuit declined to decide the self-joinder or appealability issues because it affirmed the Board’s conclusion that all of the challenged claims were unpatentable as obvious over the references in the first petition, mooting the appeal.

Although the Federal Circuit declined to address the appealability issue in Nidec Motor Corp., the Court recently overruled Achates, holding that time-bar determinations under § 315(b) are appealable. Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1367 (Fed. Cir. 2018). In Wi-Fi One, the majority noted “the ‘strong presumption’ favoring of judicial review of agency actions.” 878 F.3d at 1372 (citing Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131, 2140 (2016)).  In holding that time-bar determinations are appealable, the Federal Circuit reiterated the Supreme Court’s reasoning in Cuzzo that

§ 314(d) bars judicial review both when a patent holder merely challenged the Patent Office’s determin[ation] that the information presented in the petition … shows that there is a reasonable likelihood of success with respect to at least 1 of the claims challenged, § 314(a) and, in addition, when a patent holder grounds its claim in a statute closely related to that decision to institute inter partes review.

Id. at 1373 (quoting Cuozzo, 136 S.Ct. at 2142) (alterations in original) (internal quotations omitted) (emphasis in original). The court stated that “[w]hether a petitioner has complied with § 315(b) is not such a determination, as it has nothing to do with the patentability merits or discretion not to institute.” Id. at 1373-74. Instead, “§ 315(b) controls the Director’s authority to institute IPR that is unrelated to the Director’s preliminary patentability assessment or the Director’s discretion not to initiate an IPR even if the threshold ‘reasonable likelihood’ is present.” Id. at 1373.

In light of the Federal Circuit’s reasoning and holding in Wi-Fi One, it follows that the issue of whether the § 315(b) one-year time-bar for filing a petition applies to requests for joinder under § 315(c) would also be appealable. See id. at 1374 (“Thus, the statutory scheme as a whole demonstrates that § 315 is not “closely related” to the institution decision addressed in § 314(a), and it therefore is not subject to § 314(d)’s bar on judicial review.”).

Moreover, two Federal Circuit judges have expressed concern over the USPTO’s self-joinder and related expanded panel practice. In the concurring opinion in Nidec Motor Corp., Judges Dyk and Wallach stated that they had “serious questions as to the Board’s (and the Director’s) interpretation of the relevant statutes and current practices.” 868 F.3d at 1019 (Dyk, J. and Wallach, J., concurring). The judges framed the issue as “whether the time bar provision allows a time-barred petitioner to add new issues, rather than simply belatedly joining a proceeding as a new party, to an otherwise timely proceeding.” Id. at 1020. The judges stated that “[s]ection 315(c) does not explicitly allow this practice,” and believed “it unlikely that Congress intended that [a petitioner] could employ the joinder provision to circumvent the time bar by adding time-barred issues to an otherwise timely proceeding, whether the petitioner seeking to add new issues is the same party that brought the timely proceeding, as in this case, or the petitioner is a new party.” In their view, “the exception to the time bar for ‘request[s] for joinder’ was plainly designed to apply where time-barred Party A seeks to join an existing IPR timely commenced by Party B when this would not introduce any new patentability issues.” Id.

The judges also expressed concern “about the USPTO’s practice of expanding administrative panels to decide requests for rehearing in order to ‘secure and maintain uniformity of the Board’s decisions.’ ” Id. (citation omitted). The judges “recognize[d] the importance of achieving uniformity in USPTO decisions, [but] question[ed] whether the practice of expanding panels where the USPTO is dissatisfied with a panel’s earlier decision is the appropriate mechanism of achieving the desired uniformity.” Id. However, the judges noted that the joinder and expanded panel issue, as well as “the predicate issue of appealability,” did not need to be addressed by the Court in the case because the majority had disposed of the case on the merits. Id.

The Federal Circuit’s decision in Wi-Fi One that time-bar determinations under § 315(b) are appealable, together with the concerns expressed by Judges Dyk and Wallach in Nidec Motor Corp., suggest that the Board’s current practices regarding self-joinder may possibly come to an end if appealed in a future case. It seems unlikely that Congress intended § 315(c) to allow petitioners to circumvent the § 315(b) one-year time-bar in the way the Board has allowed.  However, until the Federal Circuit addresses the issue, the Director’s position on joinder and the use of expanded panels is likely to continue.