“This first Precedential Opinion Panel decision will do nothing to create uniformity. It leaves each judge and panel to their own devices to interpret what ‘limited circumstances’ justify joining parties and issues.” – Gene Quinn
In September 2018, the United States Patent and Trademark Office (USPTO) announced the substantial revision of Standard Operating Procedures (SOPs) for the paneling of matters before the Patent Trial and Appeal Board (PTAB) (SOP1) and precedential and informative decisions (SOP2), based upon feedback the Office received from stakeholders, courts, legislators, and six years of experience with America Invents Act (AIA) trial proceedings.
Now, the USPTO’s Precedential Opinion Panel (POP)—which includes USPTO Director Andrei Iancu, Commissioner for Patents Drew Hirshfeld, and Acting Chief Administrative Patent Judge Scott Boalick—has issued its first ever decision, holding that a petitioner may be joined to a proceeding in which it is already a party; that the Board has discretion to allow joinder of new issues in an existing proceeding; and that the existence of a time bar under 35 U.S.C. § 315(b) is one of several factors to consider when exercising this discretion.
Despite that guidance, the POP emphasized that such discretion should be used only in limited circumstances, “namely, where fairness requires it and to avoid undue prejudice to a party.” Because the instant request for joinder was filed as a result of Petitioner’s errors, the Board dismissed the IPR petition, noting that “there are no fairness or undue prejudice concerns implicated, and the Petition is otherwise time-barred under § 315(b).”
The petition at hand, Proppant Express Investments, LLC and Proppant Express Solutions, LLC v. Oren Technologies, LLC (IPR2018-00914), sought rehearing of the PTAB’s November 2018 order denying Proppant’s Motion for Joinder to institute an IPR on claim 4 of U.S. Patent No. 9,511,929 B2. Proppant was requesting to be joined to a separate IPR to which it was a party that had been instituted on other grounds.
Proppant requested rehearing of the Board’s denial and the POP granted the request to resolve conflict on the proper interpretation of Section 315(c). The POP agreed to consider the following questions:
- Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
- Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
- Does the existence of a time bar under 35 U.S.C. § 315(b), or any other relevant facts, have any impact on the first two questions?
The POP’s answer to all of these questions seems to be “perhaps.”
On the issue of same party joinder, the POP said:
“[T]he word ‘any’ naturally carries ‘an expansive meaning.’” SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018). “When used . . . with a ‘singular noun in affirmative contexts,’ the word ‘any’ ordinarily ‘refer[s] to a member of a particular group or class without distinction or limitation’ and in this way ‘impl[ies] everymember of the class or group.’” Id. Thus, by using the expansive phrase “any person” in § 315(c), Congress provided discretion, should the Director find it appropriate, to join every person who properly files a petition that warrants institution.”
The POP further found that “when § 315(c) is read in context with § 311(a), Congress specified that any person except the patent owner can be joined to a proceeding, at the Director’s discretion.”
However, the POP said that the Board will exercise this discretion only in limited circumstances and will “consider gamesmanship attempts by either party to a proceeding” as part of that analysis.
As to the question of raising new issues in a request for joinder, the POP said that the statutory language includes “no express prohibition” against it.
Section 311 specifies that a petition may request an inter partes review only on grounds “raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications,” but otherwise does not limit the issues that can be raised. 35 U.S.C. § 311(b). Thus, by referencing § 311 in §315(c), Congress allowed a petition accompanying a request for joinder to raise any grounds under §102 or § 103 on the basis of patents or printed publications. If Congress had wanted to limit the scope of a petition accompanying a joinder request to only those issues raised in the existing proceeding to which joinder is sought, it could have included such a limitation in § 315(c). Tellingly, it did not.
Again, the POP included a disclaimer at the start of its analysis on this question indicating that such discretion will only be applied in limited circumstances.
On the final question of a time bar, the POP explained that the bar applies only to the filing of a petition, and not to a request for joinder.
“The statutory language is dispositive. The first sentence of § 315(b) places a time limitation on the filing of a petition. The second sentence of § 315(b) refers back to “[t]he time limitation set forth in the preceding sentence” and provides an exception to that time limitation for a request for joinder under § 315(c).”
The decision further expounded on the potential undesirable incentives such a per se prohibition on joinder for any petition filed after the one-year limitation might create. However, it once again underscored the importance of exercising its discretion to institute time-barred petitions only in narrow circumstances:
“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. We do not provide an exhaustive list of those circumstances here. As a general matter, however, circumstances leading to 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 newly asserted claims. On the other hand, the Board does not generally expect fairness and prejudice concerns to be implicated by, for example, a petitioner’s mistakes or omissions.”
Ultimately, the POP declined to exercise its discretion as elaborated in the decision because the petitioner, Proppant, was requesting joinder as a result of its own errors—namely, to correct an error for claim 4.
IPWatchdog Founder and CEO Gene Quinn took the following view of the POP’s first decision:
“If the POP is going to come out with decisions that essentially say “maybe” or “you can but only sometimes and at the discretion of the Board” what is the point of a POP? The point of the POP was ostensibly to create uniformity across all panels of the PTAB. A decision like this will do nothing to create uniformity. It leaves each judge and panel to their own devices to interpret what ‘limited circumstances’ justify joining parties and issues.
When the Precedential Opinion Panel was first announced, I wrote that the buck would now stop with the Director, and that he would have the power to truly create uniform, all-Office policy that will not only need to be followed by patent examiners but must also be followed by the PTAB. The Director has the power to pick which decisions are precedential and will have binding effect on the PTAB, and it is rather perplexing that this would be the first POP decision. Not that this isn’t an issue of importance, although I think there are others of greater importance in need of greater uniformity across PTAB panels, but because the decision of the POP seems to be a resounding “maybe,” which is hardly speaking in the single, precedential voice that we were led to believe the POP was going to.”
Former USPTO examiner and Commissioner for Patents Bob Stoll of Drinker Biddle took a more positive stance on the decision, but added that there may be better ways for the USPTO to provide clarity on PTAB procedures:
“The first decision of the POP is a good one! The statute does not prohibit joinder by the same party for additional issues. Also the time limitation for petitions does not apply to a request for joinder. But the time-bar can be a factor considered when the Director uses his discretion to allow joinder. Timeliness and gamesmanship are factors the PTAB should consider when the patent owner asserts new claims after the bar date. Also, the POP providing guidance is one way to inform the patent community, but the America Invents Act (AIA) did give Director Iancu substantive rulemaking authority with respect to many of the PTAB procedures, and that process is a better way to go.”