PTAB Issue Joinder Practices to End

As I predicted a few weeks back, the Patent Trial & Appeal Board is now moving Proppant Express Investments, LLC, Proppant Express Solutions, LLC v. Oren Technologies, LLC, (IPR2018-00914) to the Precedential Opinion Panel (POP). This is the first case to be taken up by the new POP.

As a reminder, in Proppant a divided panel denied issue joinder under 315(c), explaining that the statutory language precluded “join[ing] new issues to an existing proceeding whether raised by the same petitioner or a different petitioner.” The Board noted the conflict this decision present with earlier decisions on the topic (known to many as the “panel stacking” decisions).

The Board explained in its Order, (here):

" This case presents an issue for Precedential Opinion Panel (“POP”) review. 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). A POP review is appropriate to address 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 POP will consist of: Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Drew Hirshfeld, Commissioner for Patents, and Scott R. Boalick, Acting Chief Administrative Patent Judge.

Amicus briefing will be accepted on or before December 28, 2018.

Scott A. McKeown is an author of the Patents Post Grant