IPR petitioners Proppant Express Investments, LLC and Proppant Express Solutions, LLC (collectively, “PropX”) have a pending instituted inter partes review (IPR) on certain claims of U.S. Patent No. 9,511,929 (“the ’929 patent”). Unfortunately for PropX, it mistakenly grouped its arguments against one of the dependent claims—claim 4—into the wrong ground, which led the Patent Trial and Appeal Board (the “Board”) to deny institution of IPR of that claim, due to inadequate support. IPR2017-02103, Paper 19 at 32, 34. After institution, PropX sought to amend the petition to move claim 4 into the proper ground. The Board denied PropX’s request because PropX was not diligent: despite Patent Owner’s (“Oren”) Preliminary Response pointing out PropX’s mistake, PropX failed to notice the mistake until after institution. IPR2017-02103, Paper 22.
After the Board denied PropX’s request to amend the petition, PropX decided to file a new IPR petition, seeking review only of claim 4 of the ’929 patent, and to join the new and already-pending IPRs. On November 8, 2018, the Board denied institution of PropX’s new petition and the joinder request. IPR2018-00914, Paper 21 (Institution Denial). The Board reasoned that the new petition was not timely, because it was filed more than one year past the filing of a complaint asserting infringement of the ’929 patent, and was therefore time-barred under 35 U.S.C. § 315(b).
PropX had argued that § 315(b) did not apply to its second petition, because it filed a timely motion for joinder, and § 315(b) states that the time bar “shall not apply to a request for joinder under subsection (c).” Paper 21 at 3; 35 U.S.C. § 315(b). Oren disagreed, arguing that the § 315(c) permits only joinder of parties, and therefore mandated denial of PropX’s petition for joinder of issues. Paper 21 at 3–4. The relevant language of § 315(c) reads:
If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.
35 U.S.C. § 315(c) (emphasis added).
PropX pointed to previous Board decisions interpreting § 315(c) as allowing same-party joinder. Paper 21 at 4–5. However, the Board agreed with Orin, reasoning that the plain language of § 315(c)—in particular, the language “join as a party”—only allowed joinder of other parties, without introducing new patentability issues (whether introduced by the original petitioning party or a different petitioner). Paper 21 at 4. Because the Board saw no ambiguity in the statute’s language, the Board denied PropX’s motion for joinder of issues. Id. at 5–6.
Administrative Patent Judge Cherry drafted a separate opinion, explaining that while he concurred in the result, he did not adopt the majority’s reasoning. Judge Cherry pointed out that the Director has discretion to grant joinder, and has repeatedly taken the position that same-party joinder can be allowed—for example, when two IPRs involve the same patent and parties. Id. (Concurrence) at 1–3.
Fortunately for PropX, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), after PropX filed its IPR petition against claim 4 of the ’929 patent. In response to SAS, the Board issued an Order modifying its Institution Decision, instituting review on all challenged claims and all grounds raised in the first Petition. IPR2017-02103, Paper 27 at 2; see also IPR2018-00914, Paper 21 (Concurrence) at 4 (acknowledging that PropX will have an opportunity to argue the unpatentability of claim 4).