In Medtronic, Inc. v.  Marital Deduction Trust, IPR2014-00695, Paper 18 (September 25, 2014), the Board denied Medtronic’s motion to join the IPR with a prior IPR 2014-00100, also involving U.S. Patent No. 5,593,417.  The Board noted that joinder was essential because this second IPR was filed more than one year after Medtronic had been served with a complaint for infringement of the ‘417 patent.

The Board said it was not persuaded that Medtronic had shown that joinder is justified in this instance. The Board said that the second petition represents a “second bite at the apple” for Medtronic, who had received the benefit of seeing the Decision to Institute in the prior case involving the same parties and patent claims.  The Board said that this “second bite at the apple” situation is particularly noteworthy in view of the § 315(b) bar at issue here, as well as a difference of opinion that currently exists at the Board as to whether the Board has discretion under 35 U.S.C. § 315(c) to allow joinder of a person to an ongoing inter partes review when that person is already a party to the ongoing inter partes review.

The “controversy” to which the Board referred, it cited its decision in Target Corp. v. Destination Maternity Corp., IPR2014-00508, (September 25, 2014) (Paper 18), where a panel construed the statute as permitting joinder of parties, not joinder of two proceedings by the same party, while in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, (September 2, 2014) (Paper 166), a panel concluded that joinder of proceedings by the same party was appropriate.

The Board noted that to the extent that Medtronic was in a difficult position, it was of its own making, since it delayed filing the second petition.