In Proppant Express Investments v. Oren Technologies, IPR2018-00914, Paper 38 (PTAB Mar. 13, 2019), the PTAB’s Precedential Opinion Panel (“POP”) addressed joinder practice in AIA trials. The POP determined that the Board has discretion to allow same party joinder of new issues in an existing proceeding, but that such joinder will only be permitted under “limited” and “narrow” circumstances. The Patent Office’s summary of the Proppant decision is reproduced below:
The POP concludes that 35 U.S.C. § 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding. The POP further concludes that the existence of a time bar under 35 U.S.C. § 315(b) is one of several factors that may be considered when exercising discretion under § 315(c). In order to balance various considerations, including those raised by other statutes such as the time bar of § 315(b), the Board will exercise this discretion only in limited circumstances—namely, where fairness requires it and to avoid undue prejudice to a party.
The POP explained that “[c]ircumstances leading to this narrow exercise of our discretion may include, for example, actions taken by a patent owner in a co-pending litigation such as the late addition of newly asserted claims.” The POP noted that allowing same party joinder would discourage gamesmanship where the plaintiff “strategically wait[s] to alter or add late-asserted patent claims in an attempt to wait out the one-year bar on filing an inter partes review petition.” The POP stated that the controlling statute “expressly provides authority to join new issues to an existing proceeding” where the “petition filed with a request for joinder satisfies the ‘reasonable likelihood’ standard.”
As previously discussed, the Patent Office created the POP to rehear matters in pending trials and appeals on issues of “exceptional importance” and “to establish binding agency authority concerning major policy or procedural issues.” Proppant is the first decision rendered by the newly formed POP. The decision is available here.