The Patent Office POPs The Door Open For Same-Party Joinder

Author:Mr Kevin R. Mosier
Profession:Wolf, Greenfield & Sacks, P.C.

In September 2018, the Patent Office created the Precedential Opinion Panel (or "POP") to increase transparency and predictability of proceedings before the PTAB by establishing precedent that would guide all PTAB judges. In March 2019, the POP released its first opinion, which held that the PTAB may, in limited circumstances, join both a petitioner to a proceeding in which it is already a party and join new issues to an existing proceeding.

In Proppant Express Investments, LLC v. Oren Technologies, LLC, the PTAB instituted an IPR trial, but not as to one of the challenged claims because the petitioner had erroneously failed to account for all of the claim limitations in its grounds for the challenge. Although the one-year time period for filing petitions had passed, the petitioner filed a new petition targeting that one non-instituted claim. The petitioner sought to avoid the one-year time bar by asking the PTAB to join its new petition to the previously instituted IPR. Under Section 315(b), petitions are exempt from the one-year time bar if they are joined to an instituted IPR.

In ruling on the new petition and the motion for joinder, the PTAB broke with previous IPR decisions and determined it has authority only to join "other parties to existing proceedings without introducing new issues of patentability." Because the second petition was time-barred, the PTAB denied institution. The petitioner requested rehearing of the PTAB's decision, and the POP chose to decide the case.

The POP interpreted the statute, 35 U.S.C. § 315(c), according to its plain meaning, emphasizing that its language permits the PTAB to join "any person who properly files a petition" that warrants institution of an IPR. The POP held that "any person" includes the prior petitioner. Further, the POP held that joinder may add new challenges to instituted IPRs, since nothing in the statute prohibits raising new issues, and the legislative history of Section 315(c) suggests Congress contemplated that joined petitions may contain new issues.

Although the POP held that the PTAB could join new claims to an instituted IPR, it held that joinder was not appropriate here. The POP stressed that...

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