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IP Alert: Recently Established PTAB Precedential Opinion Panel Set to Review First Decision

January 2, 2019

On December 3, the Patent Trial and Appeal Board (PTAB) Precedential Opinion Panel issued its first rehearing order. The case is Proppant Express Investments, LLC v. Oren Technologies, LLC and the issue for precedential review is whether the same petitioner should be allowed to join a second petition with an earlier petition on which trial has been instituted.

This marks the first precedential review since the Precedential Opinion Panel was established in September 2018 under revised Standard Operating Procedures issued by the USPTO. Under the revised procedures, the Precedential Opinion Panel was created to rehear issues of “exceptional importance” and to redesignate prior opinions of the PTAB as precedential. Either party to a decision can request precedential review by emailing the PTAB and including a request for rehearing.

Upon being sued for patent infringement, petitioner Proppant Express timely filed a first petition for inter partes review. Proppant subsequently filed a second petition, which would have been time-barred under 35 U.S.C. § 315(b), precluding any petition filed more than a year after the petitioner was served with a complaint for patent infringement. Seeking to avoid the time bar, Proppant moved for joinder of the second petition with the instituted first petition, arguing that the time bar should not apply because joinder of parties is permitted.

The original PTAB panel to decide the issue disagreed and held that the plain language of the statute prevented Proppant from joining the two petitions. It found “no ambiguity in the language of § 315(c) that would permit [them] to conclude that Congress granted the [USPTO] authority to join new issues to an existing inter partes review.” Although the Federal Circuit has not directly ruled on this issue, the PTAB noted dicta from a concurring opinion in the Federal Circuit’s recent decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., where Judges Dyk and Wallach found it “unlikely that Congress intended that petitioners could employ the joinder provision to circumvent the time bar by adding time-barred issues to an otherwise timely proceeding.”

The December rehearing order notes conflicting PTAB decisions relating to same-party joinder under section 315(c). The precedential review will address whether

  1. a petitioner may be joined to a proceeding in which it is already a party,
  2. section 315(c) permits joinder of new issues into an existing proceeding, and
  3. the existence of a time bar under section 315(b) or other relevant factors have an impact on the first two questions.

The panel for this review will consist of USPTO Director Andrei Iancu, Commissioner for Patents Drew Hirshfeld, and Acting Chief Judge for the PTAB Scott Boalick. The rehearing decision should be released early this year, after briefing is completed on January 14, 2019.

This precedential review is relevant to individuals and companies engaged in, or expecting to be engaged in, proceedings at the PTAB. The precedential review will likely establish more uniformity on same-party joinder decisions. Fitch Even attorneys are monitoring both this case and a case with similar issues currently pending at the Federal Circuit and will report back on future developments.

For more information on this decision, please contact Fitch Even partner David A. Gosse, author of this alert. 

Fitch Even associate Evan Kline-Wedeen contributed to this alert. 

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