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).
IPR2018-00914, Paper 24 at 2.  The Panel will include Andrei Iancu, Director of the US Patent and Trademark Office, Drew Hirshfeld, Commissioner of Patents, and Scott Boalick, Acting Chief Judge of the PTAB.
The Panel will address three questions related to issue joinder:
  1. Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
  2. Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
  3. 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.

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.

Continue Reading PTAB Holds that 35 U.S.C. § 315(c) Prevents Same-Party Joinder of Issues to An Instituted IPR

During the week of October 8, 2018, the Patent Trial and Appeal Board (“the Board”) issued five decisions in Tech Center 1600.  One decision denied institution of post-grant review (“PGR”), and the other four—which were related inter partes review (“IPR”) petitions—instituted the IPR petitions and granted the requests for joinder.  The decisions are summarized below. Continue Reading PTAB Tech Center 1600 Round-Up: Week of October 8-12, 2018

Under 35 U.S.C. § 316(a)(11), the PTAB should issue its final written decision in an inter partes review “not later than 1 year after the date on which the Director notices the institution of a review under this chapter,” except that the one-year period may be extended “by not more than 6 months” for good cause shown, or “adjust[ed]… in the case of joinder under section 315(c).”  See also 37 C.F.R. § 42.100(c) (“An inter partes review proceeding shall be administered such that pendency before the Board after institution is normally no more than one year.  The time can be extended by up to six months for good cause by the Chief Administrative Patent Judge, or adjusted by the Board in the case of joinder.”).

In IPR2016-00286 (Amerigen Pharms. Ltd. v. Janssen Oncology, Inc.), Amerigen challenged the patentability of U.S. Patent No. 8,822,438, directed to methods of treating prostate cancer.  The PTAB issued its notice of institution on 5/31/2016, and joined Argentum to the IPR on 9/19/2016.  The PTAB held oral argument on 2/16/2017, and its final written decision issued on 1/17/2018.  Thus, the final written decision issued 19 months and 17 days after the notice of institution, and 15 months and 29 days after joinder. Continue Reading PTAB May Wait Longer Than 12 Months To Issue Final Written Decisions In Cases of Joinder