In a previous post, we reported that in Proppant Express Investments v. Oren Techs., a panel of the PTAB held that 35 U.S.C. § 315(c) allows only joinder of other parties to an IPR, and not same-party joinder of new patentability issues. See IPR2018-00914, Paper 21 at 4-6.
In a recent order, the PTAB’s new Precedential Opinion Panel decided to review the Proppant holding on issue joinder, which appeared to differ from earlier rulings in similar cases. The Panel expressly noted that “Board decisions conflict on the proper interpretation of 35 U.S.C. § 315(c)”:
Compare, e.g., Target Corp. v. Destination Maternity Corp., Case IPR2014-00508 (Paper 28) (Feb. 12, 2015) (concluding that 35 U.S.C. § 315(c) permits a petitioner to be joined to a proceeding in which it is already a party), with SkyHawke Techs., LLC v. L&H Concepts, LLC, Case IPR2014-01485 (Paper 13) (Mar. 20, 2015) (reaching opposite conclusion).
- Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
- Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
- Does the existence of a time bar under 35 U.S.C. § 315(b), or any other relevant facts, have any impact on the first two questions?
IPR2018-00914, Paper 24 at 2. The parties and any amicus curiae may submit briefs, of no more than 15 pages, no later than December 28, 2018. Id. at 3. The parties may then file response briefs, of no more than 10 pages, no later than January 14, 2019. Id.