Joinder Denied For Petitioner Whose Invalidity Case Was Dismissed With Prejudice

In the PTAB's recent decision in Code 200 v. Bright Data Ltd., IPR2021-01503, Paper No. 13 (PTAB Mar. 14, 2022), the PTAB expounded upon the circumstances in which joinder of a “me-too” case under § 315(b) was not warranted.  In that case, Petitioner brought an IPR challenging United States No. 9,742,866 (“the '866 Patent”).  The petition was virtually identical to a pending IPR brought by NetNut Ltd. (“the NetNut IPR”) against the '899 Patent.  The motion for joinder was crucial for Petitioner because it had been sued for infringement of the '899 Patent in 2018.  Thus, if Petitioner were not permitted to join the pending NetNut IPR, its IPR would be time-barred.

The PTAB first recognized that requests for joinder are evaluated using the Kyocera  factors—(1) the reasons why joinder is appropriate; (2) whether the petition raises any new grounds of unpatentability; (3) any impact joinder would have on the cost and trial schedule for the existing review; and (4)