APJs Strictly Apply Joinder Rule in Post-Grant Review

Scott Daniels | June 11, 2013

Last week in U.S. Bancorp v. Retirement Capital Access Management, CBM2013-00014, the petitioner asked the APJs to add two additional companies to the review as petitioners and real parties-in-interest.  The two companies were defendants accused in a District Court action of infringing the patent under review, but they had not themselves requested post-grant review.  The APJs denied the petitioner’s request for joinder.

The APJs began their analysis by citing the statutory basis for joinder:

If more than 1 petition . . . is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a . . . review . . . the Director may consolidate such reviews into a single . . . review. 

35 U.S.C. § 325(c).  They then cited the regulation implementing this statutory provision is, which likewise provides:

Joinder may be requested by a patent owner or petitioner. Any request for joinder must be filed, as a motion under § 4.22, no later than one month after the institution date of any . . . review for which joinder is requested. 

37 C.F.R. § 42.222(b).  Taking these provisions together, the APJs ruled that the two companies could not be joined to the review because they had not themselves filed a petition for review.  The APJs explained that “the statute and corresponding regulation are directed to joining of proceedings not parties.”  They added that there is “no provision in the statute or rules that authorizes joinder of parties to an already-filed petition without the filing of an additional petition.”

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