Written by Nathanael Luman, Ph.D. and Kerry S. Taylor, Ph.D.

The PTAB granted joinder of a time-barred petitioner to an IPR trial after the patent owner settled its dispute with the original petitioner in AT&T Services, Inc. v. Convergent Media Solutions, LLC, IPR2017-01237, Paper 10 (P.T.A.B. May 10, 2017).

On March 3, 2017, the PTAB instituted trial on a petition filed by Netflix in IPR2016-01814. One month later, AT&T filed its own IPR petition, along with a motion to join Netflix’s instituted IPR trial. AT&T’s petition challenged the same claims as Netflix’s petition using the same arguments and supporting evidence, including the same expert and expert declaration. AT&T’s petition was filed after the one-year time bar of 35 U.S.C. 315(b). Therefore, absent joinder, AT&T’s petition was otherwise untimely.

On April 24, 2017, Netflix and the patent owner, Convergent, jointly requested authorization to file a motion to terminate the pending IPR because they had reached a settlement agreement. On April 28, the PTAB authorized Netflix and Convergent to file the joint motion to terminate, which they filed on May 1.

In opposing AT&T’s petition and motion for joinder, Convergent argued that its settlement with Netflix and the joint motion to terminate the pending IPR should result in termination of the pending IPR. Convergent further argued that termination of the pending IPR should result in denial of AT&T’s motion for joinder because there would be no pending IPR to which AT&T could be joined.

On May 10, the PTAB granted AT&T’s motion for joinder. The PTAB explained that the 315(b) time bar does not apply to AT&T’s petition because it was filed with a motion for joinder and within one month of the institution decision for the IPR sought to be joined. The PTAB found that AT&T’s joinder motion was pending sufficiently in advance of the motion to terminate the pending IPR and, therefore, it was appropriate to grant AT&T’s joinder motion. One day later, the PTAB terminated the pending IPR with respect to Netflix, but not with respect to Convergent, which resulted in the pending IPR going forward with AT&T as the petitioner.

This case illustrates that settlement between the original petitioner and patent owner in a pending IPR may not result in termination of the IPR if there is a pending motion for joinder from a third-party petitioner.