In Microsoft Corporation v. Enfish, LLC, IPR2014-00574, Paper 13, IPR2014-00576, Paper 13, IPR2014-00577, Paper 13  (September 29, 2014), the Board denied Microsoft’s request to join the petition, with one of the prior inter partes reviews Microsoft filed against the same patent.  The joinder was essential for the petition to be timely.

Among other things, Enfish argued that joinder was not available because joinder only allows the addition of parties, and Microsoft was already a party.  The Board ducked the question by quoting the statute and concluding that “[T]he standard for joinder gives the Director discretion as to whether to join an inter partes review with another inter partes review. 35 U.S.C. § 315(c)” without expressly dealing with Enfish’s point that the statute explicitly says that parties can be joined, not petitions.  Other panels of the Board have agreed with Enfish.

The Board went on to conclude that Microsoft had not sufficiently shown that joinder was justified, and in its discretion, denied the motion for joinder.

Discretion may be the better part of valor, but here it simply allows the confusion over joinder to continue.