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Precedential PTAB Panel Says Petitioners Can Join Their Own Earlier-Filed IPRs and Join New Issues in Limited Circumstance

In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, held that under 35 U.S.C. § 315(c) the Board has discretion to allow a party, in limited circumstances, to join its own earlier-filed inter partes review (“IPR”) and join new issues, even if the party was otherwise time-barred under 35 U.S.C. § 315(b).  Specifically, the Board may use this discretion only where fairness requires it and to avoid undue prejudice to a party.  The POP nevertheless denied Proppant Express Investments LLC’s (“Petitioner”) motion for joinder as Petitioner’s motion was “a result of Petitioner’s errors,” and therefore did not fall within the limited circumstances it envisioned.

In 2017, Petitioner requested an IPR on claims 1-7, 10, and 12-19 of the ’929 patent.  The Board instituted the IPR on all the challenged claims except claim 4 finding Petitioner’s evidence to be insufficient.  In 2018, Petitioner filed the IPR in question along with a motion to join its 2017 IPR under § 315(c) “to correct the error for claim 4.”  The original Panel denied Petitioner’s motion for joinder finding that § 315(c) did not allow a party to join new issues to its own earlier-filed IPR.  The Panel also denied Petitioner’s IPR as time-barred under § 315(b) because it was filed more than a year after the Patent Owner served its complaint for patent infringement on Petitioner.  Petitioner subsequently requested rehearing of this decision by the POP, which it agreed to hear the matter.

The POP reversed the original Panel holding that under § 315(c) the Board has discretion to allow a party to join its own earlier-filed IPR and raise new issues, but only in limited circumstances where fairness requires it and to avoid undue prejudice to a party.  The POP also held that the existence of a time bar under § 315(b) was not dispositive on the joinder issue but was one of several factors that may be considered when exercising discretion under § 315(c).  The POP was unpersuaded that a per se rule prohibiting same-party joinder would promote gamesmanship instead opting for a discretionary standard, which will allow the Board to fairly consider this issue on a case-by-case basis.

The POP went on to enumerate several factors the Board should consider when exercising its narrow discretion under § 315(c), including: actions taken by a patent owner in a co-pending litigation—such as the late addition of newly-asserted claims, petitioner’s mistakes or omissions in the first IPR, the conduct of the parties and attempts to game the system, the impact of the time-bar under § 315(b) may have on the petitioner, the stage and schedule of an existing IPR, events in other proceedings related to the patent at issue, and the factors set forth in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha(see Slip Op., at 20, n. 4).  “In this way, the Board can carefully balance the interest in preventing harassment against fairness and prejudice concerns on a case-by-case basis, based on the facts then before it.”  Slip Op., at 19.

The POP declined to exercise its discretion and denied Petitioner’s motion for joinder under § 315(c).  Specifically, Petitioner acknowledged that it filed its present joinder motion to correct an error from the earlier IPR.  The POP therefore reasoned that the motion was the result of Petitioner’s “own conduct [that] created a need for it to request joinder,” and did not involve one of the limited circumstances appropriate for joinder.

The POP has made clear that the Board has discretion to grant same-party and new-issue joinder in limited circumstances where fairness requires it and to avoid undue prejudice to a party.  While the bounds of such discretion are left uncertain, depending on the particular facts of the case, joinder remains a viable option for petitioners to join earlier-filed proceedings and raise new issues when they would otherwise be time-barred under § 315(b).


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About this Author

William A. Meunier, Mintz Levin, Patent Litigation Lawyer, Biotech Attorney

Bill focuses his practice on all aspects of intellectual property litigation, with a particular emphasis on patent infringement matters and other disputes related to the enforcement of intellectual property rights. He has litigated intellectual property cases in District Courts throughout the United States, including the Eastern District of Virginia, Northern and Southern Districts of California, Eastern District of Texas, District of Massachusetts, District of Delaware, Northern District of Ohio, and Middle District of North Carolina.

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Brad Scheller Patent Litigation Attorney Mintz Law Firm

Brad Scheller is a trial attorney who focuses his patent litigation practice on representing clients in the automotive devices, thermoplastics, electronic components and consumer products industries in federal district court, before the Patent Trial and Appeal Board and at the International Trade Commission. With a background in mechanical engineering and over 14 years of experience practicing law, Brad has successfully represented patent owners in enforcing their rights against infringers and protecting those rights from challenges of invalidity, and has also successfully defended and negotiated settlements for client innovators accused of infringement and unfair commercial practices.

Brad focuses his litigation practice on patent disputes in Federal District Courts, including the Eastern District of Texas, Southern District of California, District of Delaware, Northern District of California and the Eastern District of New York, as well as at the International Trade Commission. Brad has handled disputes involving a variety of technologies, including electric motors, thermoplastics, electrical components, electronic payment and financial systems, computer software and various consumer products, including cosmetics, video game systems and personal watercraft.

Brad also has extensive experience in inter partes review (IPR) and covered business method patent review proceedings before the Patent Trial and Appeal Board and repeatedly defends and successfully preserves the rights of patent owners before this tribunal. He is well-versed in the particularities of post-grant proceedings from both the petitioner and patent owner perspective and provides comprehensive post-grant counseling to clients, including advising on post-grant proceedings concurrent with federal district court litigation and International Trade Commission investigations. As a registered patent attorney, Brad enjoys representing his clients in patent office proceedings on a variety of technologies.

Brad also counsels individual inventors and emerging ventures on product development strategies, renders patent clearance and validity opinions and manages the preparation and prosecution of patent applications and portfolios in various high-technology and consumer products fields.

Brad is Co-Editor for and contributor to the Mintz Global IP Matters blog and co-chairs the firm’s Post-Grant Working Group committee.

Vincent M. Ferraro, Mintz Levin, Patent Litigation Licensing & Technology Transactions Strategic IP Monetization & Licensing IPRs & Other Post-Grant Proceedings Federal District Court

Vincent’s practice focuses on patent disputes in Federal District Courts and before the U.S. Patent Trial and Appeal Board. With over 10 years of experience, Vincent has handled patent disputes involving telecommunications, cellphone and smartphone technology, digital photography, image processing, electronic circuitry, electrical components, computer software and hardware, LCD technology, data mining, financing, mechanical devices, medical devices and implants, consumer products, GPS technology, e-commerce, and Internet security. In patent litigation cases, he guides...

Rithika Kulathila, Mintz Levin Law Firm, Litigation Law Attorney, Boston

Rithika is a litigator with a technical background in biochemistry and molecular biology. Rithika uses her technical and legal experiences when working with companies in the life sciences, biotechnology, health care, and technology sectors.

Rithika earned her JD from UC Berkeley Law School, while also serving as a judicial extern to the Hon. Susan Y. Illston of United States District Court for the Northern District of California and a legal intern for the medical-legal partnership at the East Bay Community Law Center in Berkeley, California....