The Federal Circuit Expresses Concern about IPR Joinder and Expanded Panels
In a recent decision, Judges Wallach and Dyk filed a concurring opinion to express their concerns regarding joinder and expanded panels at the Board. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., Case No. 2016-2321 (Fed. Cir. Aug. 22, 2017). In the underlying proceeding, Broad Ocean filed a first IPR challenging claims directed to a motor controller for an HVAC system. Slip op. at 3. The Board instituted trial but denied one of the grounds. Id. While IPR petitions are generally subject to a one-year time bar, the bar does not apply to a request for joinder. 35 U.S.C. § 315(b), (c). Broad filed a second IPR, this time after the one-year bar date, again asserting the previously-denied ground, and requested joinder with the first proceeding. Id. at 4. The panel found the second petition to be time barred, interpreting the joinder provision as not permitting a party to join issues to a proceeding to which it is already a party. Id. Broad Ocean requested a rehearing, which was granted before an expanded panel. Id. The expanded panel set aside the non-institution decision, finding that s. 315(c) "encompasses both party and issue joinder..., including new grounds of unpatentability." Id. at 4-5. This decision was somewhat surprising as the PTAB has historically been fairly stringent in application of the statutory bar.