In a previous post, we reported that the PTAB’s Precedential Opinion Panel (POP) tackled issue joinder in Proppant Express Investments v. Oren TechsIPR2018-00914, Paper 24 at 2.

As background, in Proppant, the POP addressed the following issues:

  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 § 315(b), or any other relevant facts, have any impact on the first two questions?

The POP determined that § 315(c) “provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding.”  IPR2018-00914, Paper 38, at 4.

In Facebook, Inc., v. Windy City Innovations, LLC, the Federal Circuit reversed the POP opinion.  953 F.3d 1313 (Fed. Cir. 2020) (the “Decision”).  Specifically, the court held that “[t]he clear and unambiguous text of § 315(c) does not authorize same-party joinder, and does not authorize the joinder of new issues.”  Decision at 1322. 
Continue Reading Federal Circuit Reverses PTAB’s Precedential Opinion Panel on Aspects of Joinder

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

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