The Precedential Opinion Panel (“POP”) ordered a review on rehearing in Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2018-00914, to resolve conflicting Board decisions on the proper interpretation of 35 U.S.C. § 315(c). The POP order instructed the Board to address three issues:
- 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?
Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2018-00914, Paper 38 at 3 (Mar. 13, 2019).
Section 315(c) states:
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.
The Board started its analysis noting that § 315(c) grants the Director broad discretion to grant joinder. IPR2018-00914, Paper 38 at 5.
The Board concluded that a petitioner may be joined to a proceeding in which it is already a party. IPR2018-00914, Paper 38 at 4. The Board analyzed the language of § 315(c) and concluded that the phrase “any person” contains no limitations on which “persons,” other than the patent owner, may be joined as a party. Id. at 5–11.
The Board also concluded that new issues may be joined into an existing petition under § 315(c). IPR2018-00914, Paper 38 at 4. The Board relied on the language in § 315(c) requiring a party requesting joinder to “properly file a petition under section 311.” Id. at 11. The Board reasoned that § 311 sets forth the grounds that can be raised in a petition and nothing in § 315(c) limits the issues that can be raised. Id.
The Board further concluded that the time bar under 35 U.S.C. § 315(b) is one of other relevant facts that it will consider when exercising its discretion under § 315(c). IPR2018-00914, Paper 38 at 4. Specifically, the Board was explicit that it will exercise its discretion under § 315(c) in very limited circumstances, namely, where fairness requires it and to avoid undue prejudice to a party. Id.
Although the Board did not provide an exhaustive list of limited circumstances in which it would grant joinder under § 315(c), it stated that “[c]ircumstances leading to this narrow exercise of our discretion may include, for example, actions taken by a patent owner in a co-pending litigation such as the late addition of newly asserted claims.” IPR2018-00914, Paper 38 at 19. Cases that involve petitions filed to fix mistakes or omissions of a petitioner would not be sufficient to raise fairness and prejudice concerns to grant joinder.
In this case, the Board declined to exercise its limited discretion to grant joinder because Petitioner conceded that it filed the second petition to correct its errors as to one of the patent claims that was unsuccessful in the first petition.
This decision is significant because it clarifies that the same petitioner and new issues may be joined to an earlier proceeding. The Board, however, will scrutinize such requests for joinder to determine whether either party has engaged in gamesmanship in district court or Board proceedings.
This is the first decision issued by the Precedential Opinion Panel, which is composed of the Director of the USPTO, the Commissioner for Patents, and the Chief Judge of the Patent Trial and Appeal Board.