The March 2019 decision from the PTAB's Precedential Opinion Panel ("POP") in Proppant Express Investments v. Oren Technologies held that petitioners can in some situations join issues to their pending IPRs by filing another petition, even after the one-year time bar would normally bar the petitioner from requesting IPR. But the Federal Circuit recently reversed course in Facebook v. Windy City Innovations, limiting petitioners' options to avoid the one-year time bar.
Before Windy City, the POP's decision in Proppant opened the door for so-called same-party joinder of new issues. The POP explained that 35 U.S.C. § 315(c) permits the PTAB to join "any person who properly files a petition" that warrants institution of an IPR. The POP found that "any person" includes the prior petitioner in an already-pending IPR. The POP also found that nothing in section 315(c) prohibits joining new issues to existing proceedings.
But under Proppant, same-party joinder of new issues was generally appropriate "only in limited circumstances where fairness requires it and to avoid undue prejudice to a party." The POP reasoned that it might be appropriate in circumstances where the patent owner waited to identify the claims it is asserting until after the one-year window for IPR petitions had passed.
Windy City was just that circumstance. The patent owner alleged infringement did not identify which specific claims it was asserting until after the one-year time bar had expired. Consequently, the PTAB allowed joinder, reasoning that the petitioner could not have reasonably determined which claims were asserted against it within the one-year time bar.
The Federal Circuit reversed. It held that joinder refers to a different party – not the same party – and that section 315(c) "does not authorize the joined party to bring new issues . . . into the existing proceeding, particularly when those new issues are other-wise time-barred." With that, the Federal Circuit expressly overruled Proppant, and slammed the door shut on joinder of the same parties and new issues to existing proceedings.
Takeaways:
After Windy City, the one-year clock that starts when the defendant is served with a complaint alleging infringement takes on even more significance. Petitioners can no longer use same-party joinder of new issues to expand their IPRs after the clock has run.
But petitioners are not without options. Petitioners may choose to file for IPR of all claims in the asserted patents. There is some risk to that plan if the challenge to each claim is not strong, since the PTAB can discretionarily deny the petition. Petitioners can also focus the IPR on certain claims, while challenging other claims in district court. And petitioners can work to ensure an earlier identification of asserted claims in court.
When the one-year time bar is not at issue, parties still have some freedom to join new claims to existing IPRs. For example, a recent PTAB decision in Mercedes-Benz v. Carucel Investments (IPR2019-01644) treated a request for same-party joinder of new issues as a request for consolidation of IPR proceedings and granted the request.
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