You might recall that in Nidec v. Zhongshan the Federal Circuit frowned upon some of the USPTO’s joinder practices under the AIA. It was unnecessary for the Federal Circuit to resolve the joinder issue in Nidec, however, because the Federal Circuit was able to affirm the PTAB without having to reach the joined issue.
The Federal Circuit will have another opportunity to address joinder in an upcoming matter. A petition for a writ of mandamus has been filed in In re Windy City Innovations. The matter concerns joined IPR’s brought by Facebook against Windy City Innovations.
You can review the briefing here:
Petitioner’s brief: [Link]
Respondent’s brief: [Link]
Petitioner’s reply brief: [Link].
The PTAB’s opinion is available as an Exhibit to the Petitioner’s brief.
In a curious turn of events, two of the three PTAB judges noted in concurring remarks in the PTAB opinion that they did not believe that the statute authorized same-party joinder; however, despite that belief, they ruled in favor of permitting joinder because the Director had noted in a previous case that same-party joinder should be permitted:
My view is that § 315(c), when properly interpreted, does not authorize same-party joinder because a party cannot be joined to a proceeding “as a party” if it already is a party to that proceeding. In this respect, I agree with the reasoning set forth in SkyHawke Technologies, LLC v. L&H Concepts, LLC, Case IPR2014-01485, slip op. 3–4 (Mar. 20, 2015) (Paper 13).
I recognize, however, that the Director has taken the position before the U.S. Court of Appeals for the Federal Circuit that § 315(c) authorizes same-party joinder. See, e.g., Brief for Intervenor – Director of the United States Patent and Trademark Office at 32–39, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., No. 2016-2321 (Fed. Cir. filed Jan. 12, 2017). Despite my disagreement with that interpretation, because our decision on whether to grant Facebook’s Motion for Joinder is an exercise of the Director’s authority on the Director’s behalf, I concur with the Decision’s application of the Director’s view of § 315(c).