In my last post, we explored the interplay of the one-year bar under 35 U.S.C. § 315(b) and joinder in inter partes review (IPR) proceedings.  That case involved a Petitioner who could not have filed an IPR petition prior to the 315(b) bar date because the bar triggered prior to the date that the America Invents Act (AIA) authorized filing of IPR petitions.  That Petitioner was barred from joining another set of IPRs when those IPRs were terminated early (before decision on institution).

Consider the situation where a prospective petitioner could file an IPR under the AIA, but observes another Petitioner has already filed an IPR petition, so the prospective petitioner hesitates to file pending the results of the earlier-filed IPR petition.  Shouldn’t that  prospective petitioner just wait to see if the first petition is successful in obtaining institution of trial, and then join if the first petitioner is granted?  If so, the prospective petitioner could file its petition with a request for joinder to join the first IPR under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), correct?  Perhaps, but what happens if the first Petitioner settles with Patent Owner before the Board’s institution decision?  If the prospective petitioner files its petition after it is barred under 315(b), and the first IPR terminates before institution of trial, the prospective petitioner will have lost its right to join the earlier-filed IPR and its late petition will be dismissed.  That’s precisely what recently happened in IPR2014-00244:

The Board agrees with Patent Owner that Fifth Third Bank should not have delayed in filing its petition until after it learned of the settlement, allowing the one-year period under 35 U.S.C. § 315(b) to lapse. By doing so, Fifth Third Bank took a risk that the inter partes review proceeding would terminate prior to a decision on institution, as 35 U.S.C. § 315(c) only permits joinder to a previously instituted case. See 35 U.S.C. § 315(c) (“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review . . .”). We do not find persuasive Fifth Third Bank’s arguments of prejudice. Fifth Third Bank made a litigation choice, and now must face the consequences.

Because Fifth Third Bank delayed its filing, and IPR2013-00341 has been terminated, the joinder statute’s prerequisite of an instituted review cannot be met. Fifth Third Bank’s request for joinder is, therefore, denied.

Fifth Third Bank v. Leon Stambler, IPR2014-00244, Paper 4 (December 17, 2013) at p. 5.

Under the statute, joinder is available if institution occurs.  But since settlement and termination can occur before institution of trial, a prospective petitioner must be careful not to allow the 315(b) bar to block its filing if that can be avoided.