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Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2018-00914, Paper 38, Patent No. 9,511,929 B2

[Deciding whether the time bar of § 315(b) applies to motions for joinder]

FACTS

Proppant Express Investments (“Petitioner”) filed a petition for IPR. This petition was denied with respect to claim 4 of the patent to Oren Technologies (“Patent Owner”) due to a mistake by Petitioner. For this reason, Petitioner filed an additional petition for IPR (asserting the correct grounds for challenging claim 4) along with a motion to join this proceeding to the previous IPR. The Board denied the petition and the motion for joinder, but granted Petitioner’s request for rehearing.

HOLDING

35 U.S.C. § 315(c) permits the petitioner to be joined to a proceeding in which it is already a party, but the Board will only exercise this discretion in limited circumstances, including considering gamesmanship attempts by the parties.

35 U.S.C. § 315(c) also permits the joinder of new issues to an existing proceeding, but, again, the Board will only exercise its discretion in limited circumstances. The Board reached this conclusion, because § 315(c) makes it clear that a petition requesting joinder must also satisfy the requirements for institution of an IPR. This would be redundant if new issues could not be joined to an existing proceeding.

The time bar of § 315(b) (petitioner cannot file a petition for IPR more than 1 year after they have been served a complaint alleging infringement) applies only to petitions for IPR and not motions for joinder. When a petition for IPR is accompanied by a motion for joinder, the Board will weigh this time bar in deciding whether to exercise their discretion under § 315(c). The board will only waive this requirement when fairness requires it and to avoid undue prejudice to a party.

Applying to the facts of this case, because the petitioner’s own mistake caused the need to request joinder, they are not unduly prejudiced, and the time bar of § 315(b) is not waived. Additionally, the petition for IPR cannot be granted on its own, because the petitioner was served process more than 1 year before the petition was filed.

Thus, while the rehearing was requested, the motion for joinder was denied, and institution of IPR was denied.

TAKEAWAY

When a motion for joinder and a petition for IPR are filed, the board may waive the time bar of § 315(b) if it is necessary to avoid undue prejudice. Additionally, § 315(c) permits joinder of parties already a party to the proceeding and joinder of new issues, but the Board will exercise this discretion in limited circumstances.

A copy of the actual decision can be found here.