PTAB Precedential Opinion Panel Clarifies Issue Joinder Under 35 U.S.C. § 315(c)

March 14, 2019 – Article

In the first case to be taken up by the PTAB’s Precedential Opinion Panel (POP), Director Iancu, Commissioner Hirshfeld, and then Acting Chief Judge Boalick (now appointed) have determined that, under appropriate and limited circumstances, a petitioner may join its own previously-instituted IPR to request joinder and institution of new issues.

In Proppant Express Invs., LLC et al. v. Oren Tech., LLC, petitioners filed an otherwise time-barred IPR petition and motion for joinder in an effort to join their original, partially-instituted IPR to correct an error in their analysis for claim 4. This motion was denied because the original panel concluded that “35 U.S.C. § 315(c) [provides] authority to join only other parties to existing proceedings without introducing new issues of patentability,” and petitioners’ request ran contrary to both requirements. Petitioners requested rehearing, which was granted and submitted to the POP for consideration of the following questions:

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?

 The answer to each was yes:

As to the first two issues, we conclude that 35 U.S.C. § 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. We further conclude that the existence of a time bar under 35 U.S.C. § 315(b) is one of several factors that may be considered when exercising our discretion under § 315(c).

The POP went on to conclude that the PTAB should exercise its discretion to allow issue joinder “only in limited circumstances—namely, where fairness requires it and to avoid undue prejudice to a party.” These considerations may dictate an acceptable use of issue joinder when, for example, a patent owner adds newly asserted claims after petitioner’s time period for requesting IPR has expired.

In contrast, the POP noted that it “does not generally expect fairness and prejudice concerns to be implicated by, for example, the mistake or omissions of a petitioner.” The conduct of the parties and attempts to game the system may also be considered as part of the PTAB’s case-by-case joinder analysis. Similarly, the POP explained that “the stage and schedule of an existing inter partes review might make joinder to that proceeding inappropriate,” and that consideration of the PTAB’s General Plastic factors for discretionary denials of institution under 35 U.S.C. § 314(a) may also be appropriate in the joinder context.

As to the specific request for joinder in this case, petitioners’ motion was denied because “Petitioner’s own conduct created the need for it to request joinder, [and thus,] this case does not involve one of the limited circumstances in which the Board will exercise its discretion to allow same party and/or issue joinder.” Similarly, the POP explained that allowing joinder in cases such as this, where the joinder motion and IPR petition are filed outside of petitioner’s one-year-IPR-filing window, “could effectively vitiate the time limitation of § 315(b) and obviate the careful balance the statute and legislative history contemplate.”

For those that have been practicing before the PTAB since its inception, it is quite encouraging to see the newly created POP provide resolution and uniformity on an issue that, although it doesn’t arise all that often, was receiving panel-dependent treatment when a consistent voice was needed. Now, the law of the PTAB is clear, at least until this issue works its way to the Federal Circuit. The POP’s analysis is largely based upon statutory interpretation and, thus, despite this issue being directed to discretionary institution practices, we expect that the Federal Circuit will find this issue reviewable under the Supreme Court’s Cuozzo decision and the Federal Circuit’s en banc Wi-Fi One decision.

But so long as Proppant Express remains good law, we expect the PTAB to police issue joinder carefully, denying requests in response to petitioner gamesmanship or a self-inflicted need for a second bite of the apple, and granting requests when the equities suggest that the original petitioner (or perhaps a third-party requesting joinder) should be able to expand the scope of the originally instituted proceeding.

And while SAS may have lessened the need for petitioners to attempt issue joinder to rehabilitate partially-denied grounds/arguments (which would likely be denied anyway under Proppant Express), the potential ability to add newly asserted claims to an instituted IPR, particularly if those claims are asserted by patent owner after petitioners’ one-year-filing window, is a useful tool for petitioners.