Otherwise Time-Barred Parties Joined to IPR Proceeding Have Standing to Appeal Independent of the Original Petitioner

A petition for inter partes review (IPR) was filed and a trial was instituted based on the grounds raised in the petition. After institution, a number of parties were joined to the proceeding based on their petitions and motions for joinder. Their participation in the proceedings was limited to an “understudy” role that is common when parties are joined to an IPR. The petitioners were not successful in challenging the claims, and the patentability of those claims was confirmed in the final written decision. The joined parties appealed, but the original party lacked standing to appeal and did not take an appeal.

One question raised on appeal was whether the joined parties had standing to appeal. The appellee contended they did not and made two arguments to support its theory. First, it contended that the appellants were not entitled to appeal under 35 U.S.C. § 319 because their petitions were otherwise time barred. Second, the appellee contended that the appellants should not be able to participate in the appeal because of their limited “understudy” role in the IPR proceedings. The Federal Circuit rejected both arguments and concluded that the appellants had standing.

The court started with the immutable premise that a statutory cause of action extends only to litigants that are within the zone of interests that the law protects. Looking first to 35 U.S.C. § 315(c), the Federal Circuit concluded that when a petitioner is joined into an IPR, they are joined “as a party.” Next, examining the language of 35 U.S.C. § 319, the court observed that “[a] party dissatisfied with the final written decision can take an appeal of that decision.” Moreover, “[a]ny party to the inter partes review shall have the right to be a party to the appeal.” In light of this, the statutes, when read together, precluded the appellee’s reading of the statute. As to the appellee’s second argument, the Federal Circuit held that just because the Patent Trial and Appeal Board has discretion to place requirements on joinder did not mean that the parties lost standing to appeal under § 319.