July 22, 2019

July 22, 2019

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Joinder Motions Do Not Nullify the One-Year Statutory Bar for Petitions

Addressing whether the concurrent filing of a motion for joinder is sufficient to overcome the one-year statutory bar on inter partes review (IPR) petitions, the Patent Trial and Appeal Board (PTAB or Board) denied a petitioner’s request for rehearing, finding that such an interpretation would render the one-year statutory bar a nullity. ZTE Corp. v. Adaptix, Inc., Case No. IPR2015-01184 (PTAB, Oct. 16, 2015) (Blankenship, APJ).

Under 35 U.S.C. § 315(b), IPR petitions are barred if the petitioner was served with a complaint alleging infringement of the subject patent more than one year prior to the date of the petition. The petitioner, ZTE, argued that a petition is not subject to this time bar if the petition is accompanied by a request for joinder, even if the request for joinder is denied. The PTAB rejected ZTE’s argument. Indeed, as the Board explained, under ZTE’s interpretation, to avoid the one-year statutory bar, a petitioner would simply need to file a motion for joinder with some proceeding, even when the petitioner has full knowledge that the motion would be denied. Such an interpretation would make the rule meaningless. The PTAB also noted that, in the single case ZTE cited for the proposition that a motion for joinder overcame the one-year time bar, the motion for joinder was granted.

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About this Author

Joseph Speyer, Intellectual Property Attorney, McDermott Emery Will Law firm

Joseph Speyer, PhD, focuses on patent prosecution, including drafting and prosecuting patent applications related to electronics, chemistry, materials science, mechanical devices and telecommunications. He also provides freedom-to-operate opinions and litigates in district court and at the US International Trade Commission, where he has provided counsel regarding technologies such as telecommunications, electronics and mechanical devices.

Previously, Joseph was a law clerk at the US International Trade Commission, where he gained experience...