Filewrapper®

Precedential Opinion Panel Decides Issue Joinder in IPR is Permissible

March 14, 2019
Post by Patricia A. Sweeney - Of Counsel

A panel of the Patent Trial and Appeal Board (PTAB) issued a precedential decision March 13, 2019 stating that a party that challenges a patent in an inter-partes review (IPR) proceeding can join their own petition challenging another’s patent, in order to add new issues, but only in limited circumstances.

Here, Proppant Express Investments LLC started an IPR proceeding to challenge a patent of Oren Technologies LLC on technology related to fracking (patent 9,511,929). Proppant Express Investments LLC v. Oren Technologies LLC, Case IPR2018-00914, Paper 38 (Mar. 13, 2019) (designated: Mar. 13, 2019). Proppant then wanted to add new issues, and filed a motion asking to join the IPR as a party in order to raise the additional issues. In its initial decision, the PTAB denied the motion to join, stating that while other parties can join an IPR, new issues cannot be joined in an IPR challenge already filed. 

This holding was reversed by a Precedential Opinion Panel. A precedential decision can be cited as establishing a rule or principle. The panel included the Patent Office Director Andrei Iancu, Commissioner of Patents Drew Hirshfeld, and the PTAB Chief Judge Scott Boalick. The Panel decided that so-called “issue joinder” is permissible under 35 USC§315(b) at the discretion of the PTAB. However, the Panel said this can occur only in limited circumstances and went on to deny the issue joinder in this situation. Such limited circumstances, it found, occur “where fairness requires it and to avoid undue prejudice to a party”. An example provided of such limited circumstances are actions taken by a patent owner in a co-pending litigation, such as the late addition of newly asserted claims. The decision added, “On the other hand, the Board does not generally expect fairness and prejudice concerns to be implicated by, for example, the mistakes or omissions of a petition”.

Here, the limited circumstances did not occur, where the purpose of issue joinder was to correct Proppant’s error in the petition filed, and the new petition was filed more than one year from the deadline for filing an IPR. The decision can be reviewed at the USPTO website.

Patricia A. Sweeney is an Intellectual Property Attorney in the Biotechnology & Chemical Patent Practice Group at McKee, Voorhees & Sease, PLC. Pat was the first female patent attorney in the State of Iowa. For additional information please visit the MVS website or contact Pat directly via email at patricia.sweeney@ipmvs.com.


 



Post Categories

Comments (0)
Post a Comment



Captcha Image
Return to the Filewrapper Blog

Search Posts

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.

Captcha Image