Timing Is Everything: Successful Joinder Motions At The PTAB

The joinder provisions of inter partes review (IPR) proceedings can be a great tool to circumvent the 1-year IPR filing deadline following service of a complaint for infringement. However, grant of a joinder petition by the Patent Trial and Appeal Board (PTAB) requires recognition that the Board is loath to delay a final hearing date once it has a scheduling order in place.

Specifically, IPR joinder provisions permit the filing of a request to join a previous IPR proceeding by the same or a new petitioner where the IPR petitions would be otherwise time barred pursuant to 35 U.S.C. § 315(b).  (Upon service of a complaint for patent infringement, a defendant has one year to file a petition for IPR of the patent in the USPTO.)  For example, a second IPR request can be filed by the first petitioner or a first IPR request can be filed by a second petitioner.