Posts Tagged: "the joinder rule"

PTAB fails to decide IPR within 1-year statutory deadline

According to 35 U.S.C. § 316(a)(11), the PTAB is required to issue a final determination in an inter partes review not later than 1-year after the date of a decision to institute review is made… That the PTAB has not extended a single case for cause should not be confused with the PTAB following the mandates of § 316(a)(11). Indeed, the parties have been waiting for a decision in IPR2016-00237 for more than 14 months… It seems that the PTAB is here, and presumably in other joinder cases, giving itself more than 1-year without a showing of cause. If that is the case the PTAB is intentionally misreading § 316(a)(11) in order to construe it to give themselves 1-year from the last joinder Order rather than 1-year from the date of institution as the statute requires.

Gene Quinn

September 7, 2017

Federal Circuit dodges IPR joinder challenge because claims ruled obvious

Nidec argued that the Board improperly applied the joinder and time bar statutes. The Court held that it need not resolve this dispute because it affirmed the Board’s conclusion that all of the challenged claims are unpatentable as obvious. There was no dispute that the first petition was timely filed, and the joinder issues on appeal related only to the Board’s ruling on anticipation, which ultimately did not affect the outcome of the case… The Federal Circuit does not decide issues which have no effect on the outcome of the case. Thus, Board’s ruling that a party may add new issues to an IPR by joining two IPR proceedings was undisturbed and was endorsed in concurring opinion by two Federal Circuit judges.

Robert Schaffer & Joseph Robinson

September 4, 2017

The Number of Unique Patent Assertions Has Been Declining Since 2010

The analysis of unique patent numbers asserted each year surprisingly suggested a decline since 2010. This is an important measure, because it shows that the rise in the number of lawsuits reported by many studies is the result of only a few players (plaintiffs) who had to file many cases due to AIA and joinder rules. Additionally, although it was assumed by many experts that the number of patents per case will increase over time in order to reduce the risk of invalidation through IPR, that number has not changed significantly. In fact, it dropped last year.

Pedram Sameni

August 22, 2016