IP Law Daily Review petitioner denied request to join new issue it failed to plead in pending proceeding
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Tuesday, March 19, 2019

Review petitioner denied request to join new issue it failed to plead in pending proceeding

By Thomas Long, J.D.

A petitioner who is already a party in a pending IPR may petition for joinder of both itself as a party and new issues not raised in the earlier proceeding, but only in the discretion of the PTAB, which will limit that discretion to cases implicating fairness and prejudice issues, and not the petitioner’s own errors.

A petitioner seeking inter partes review (IPR) of patent claims may, in the discretion of the Patent Trial and Appeal Board, be joined under 35 U.S.C. § 315(c) to a proceeding in which it is already a party, and may seek joinder of new issues into an existing proceeding, the Board has determined in a decision designated as precedential. In addition, the Board concluded that the existence of a time bar under 35 U.S.C. § 315(b) is one of several factors that may be considered when the Board exercises its discretion under Section 315(c). The Board said that it would exercise this discretion only in limited circumstances, when fairness requires it and to avoid undue prejudice to a party. These fairness and prejudice concerns would not ordinarily be implicated by a petitioner’s mistakes or omissions. Accordingly, the Board denied a petitioner’s request for joinder of IPR of one claim of a patent—which was related to a proppant storage vessel—to a pending IPR proceeding involving other claims of the same patent because the request for joinder was filed as a result of the petitioner’s errors, there were no fairness or prejudice issues implicated, and the petition was otherwise time-barred (Proppant Express Investments, LLC v. Oren Technologies, LLC, March 13, 2019, Boalick, S.).

Petitioners Proppant Express Investments, LLC, and Proppant Express Solutions, LLC (together, "Proppant") requested IPR of claim 4 of U.S. Patent No. 9,511,929 B2 ("the ’929 patent"). Proppant also filed a Motion for Joinder requesting that the IPR be joined to a pending proceeding, IPR2017-02103 ("the 2103 IPR"). The patent owner, Oren Technologies, LLC, opposed joinder. The 2103 IPR involved a request to review claims 1–7, 10, and 12–19 of the ’929 patent. Although the Board instituted IPR, it did not institute on the ground challenging claim 4 because Oren pointed out that Proppant had failed to account for all of the limitations of claim 4 under the ground asserted against claim 4. Thereafter, Proppant filed the Petition and Motion for Joinder in the current case to correct the error for claim 4.

The Board denied the Petition and Motion for Joinder, reasoning that 35 U.S.C. § 315(c) provided authority to join only "other parties to existing proceedings without introducing new issues of patentability." Therefore, the Board denied the Motion for Joinder because Proppant was already a party to the 2103 IPR and sought to introduce new issues to the 2103 IPR. The Board denied the Petition under 35 U.S.C. § 315(b) because Proppant had been served with a complaint alleging infringement of the ’929 patent more than one year before the date on which the Petition in this proceeding was filed. Proppant requested a rehearing. Because Board decisions conflicted on the proper interpretation of Section 315(c), the Precedential Opinion Panel (POP) ordered a review on rehearing.

Same party joinder. The first issue for POP review was whether 35 U.S.C. § 315(c) permits a petitioner to be joined to a proceeding in which it is already a party. The Board concluded that it does. However, the Board will exercise its discretion to grant joinder in situations involving same-party joinder only in limited circumstances.

In the Board’s view, the broad language of the statute—which stated that Section 315(c) provided discretion to "join as a party ... any person who properly files a petition under section 311 that ... warrants the institution of an inter partes review under section 314" (emphasis added by Board) supported the view that Congress did not prohibit joinder of a person who is already a petitioner in a proceeding.

Issue joinder. The second issue for POP review was whether 35 U.S.C. § 315(c) permits joinder of new issues to an existing proceeding. The Board concluded that it does, but reiterated the point that it would exercise its discretion to grant joinder in these situations only in limited circumstances. The Board noted that there was no statutory prohibition against raising new issues. The statutory language allowed a petition accompanying a request for joinder to raise any grounds under Section 102 or Section 103 on the basis of patents or printed publications.

Time bar under Section 315. Section 315(b) provides that an IPR may not be instituted if the petition requesting the proceeding was filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The third issue for POP review was whether the existence of a time bar under Section 315(b), or any other relevant facts, have any impact on the first two questions. The Board concluded that the existence of a time bar is one of several factors that may be considered when exercising its discretion under Section 315(c). In general, the Board said that it will exercise this discretion only in limited circumstances where fairness requires it and to avoid undue prejudice to a party. "Circumstances which may justify this narrow exercise of discretion may include, for example, actions taken by a patent owner in a co-pending litigation such as the late addition of new asserted claims," the Board said. "On the other hand, the Board does not generally expect fairness and prejudice concerns to be implicated, for example, where a petitioner merely corrects its mistakes or omissions."

In the Board’s view, the statute provides discretion to grant joinder in appropriate circumstances even after the time limitation set forth in the first sentence of Section 315(b). Section 315(c) itself places no time restriction on filing a request for joinder. However, the Board cautioned, broadly exercising the discretion granted to the Director in Section 315(c) could effectively circumvent the time limitation in Section 315(b) in many cases. When an otherwise time-barred petitioner requests same party and/or issue joinder, the Board will exercise this discretion only in limited circumstances—namely, where fairness requires it and to avoid undue prejudice to a party. The Board did not provide an exhaustive list of circumstances warranting this exercise of discretion, but it cited as an example the late addition of newly asserted claims.

Petition and Motion for Joinder. In this case, the Board declined to exercise its discretion pursuant to Section 315(c). Proppant had requested an IPR of claim 4 in the 2103 IPR, but it erroneously did not make out a proper case in the petition. Proppant acknowledged that it filed the Petition and Motion for Joinder in this case in order to correct the error for claim 4 in the 2103 IPR. "Because Petitioner’s own conduct created the need for it to request joinder, this case does not involve one of the limited circumstances in which the Board will exercise its discretion to allow same party and/or issue joinder," the Board said. Furthermore, because Proppant was served with a complaint alleging infringement of the ’929 patent more than one year before the date on which the Petition was filed, the Petition could not be brought separately from the earlier proceeding because it was untimely under Section 315(b).

This case is No. IPR2018-00914.

Attorneys: Mark T. Garrett (Norton Rose Fulbright US LLP) for Proppant Express Investments, LLC, and Proppant Express Solutions, LLC. Gianni Cutri (Kirkland & Ellis LLP) for Oren Technologies, LLC.

Companies: Proppant Express Investments, LLC; Proppant Express Solutions, LLC; Oren Technologies, LLC

MainStory: TopStory Patent USPTO

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