IPR Joinder and PTAB’s Expanded Panels Concerns Federal Circuit

The Federal Circuit in a per curiam opinion affirmed the PTAB’s final written decision of invalidity in an IPR.  Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., No. 2016-2321 (Fed. Cir. Aug. 22, 2017).  In a concurring opinion by Judges Dyk and Wallach, they expressed their concerns regarding joinder and PTAB’s expanded panels.  In the PTAB proceeding, Broad Ocean filed an IPR petition challenging the validity of some of the claims on grounds of obviousness and anticipation.  Board instituted review on obviousness but declined on anticipation as it failed to provide an affidavit for prior art translation.  Broad Ocean filed a second IPR, this time after the one-year bar date, asserting anticipation and requested joinder with the first petition.  A PTAB panel found the second petition was time barred, interpreting the 315(c) as not permitting a party to join issues to a proceeding to which it is already a party.  Broad Ocean requested a rehearing and an expanded panel set aside the non-institution decision finding that 315(c) “encompasses both party and issue joinder…including new grounds of unpatentability.”  The Federal Circuit affirmed the PTAB decision but Judges Dyk and Wallach noted that they have “serious questions as to the Board’s [] interpretation of the relevant statutes and current practices.”  They noted that allowing petitioners to circumvent the time bar by adding new issues is contrary to Congressional intent and that the practice of expanded panels where the PTO is dissatisfied with a panel’s earlier decision may not be the appropriate mechanism for achieving uniformity in PTO decisions.