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TAKEAWAY: The USPTO’s newly-created Precedential Opinion Panel (POP) exercised its authority to interpret 35 U.S.C. § 315(b)-(c) in a manner that maintains broad discretion for the PTAB to grant joinder.

Last year, the U.S. Patent and Trademark Office (USPTO) created the POP to establish binding agency authority concerning issues of exceptional importance before the Patent Trial and Appeal Board (PTAB). POP members are selected by the Director of the USPTO, and by default consist of the Director, the Commissioner for Patents, and the Chief Judge of the PTAB.

In its first decision, the POP reviewed a prior PTAB decision in Proppant Express Investments, LLC v. Oren Technologies, LLC (IPR2018-00914), addressing how parties may be joined to an IPR proceeding under 35 U.S.C. § 315(c) and implications for the time bar imposed by § 315(b). In Proppant, the petitioner filed a second IPR petition against the same patent more than a year after filing its initial petition, wherein the petitioner raised new issues. The petitioner also filed a motion to join the two IPR proceedings under § 315(c). The PTAB denied the motion for joinder and found that the second petition was time-barred under § 315(b).

In reviewing the joinder and time-bar determinations, the POP considered statutory interpretation and legislative history to conclude that § 315(c) permits (1) a petitioner to be joined to a proceeding in which it is already a party, and (2) joinder of new issues into an existing proceeding. However, the POP pointed out that the PTAB has discretion to grant joinder in limited circumstances, after carefully balancing the interests of fairness and preventing harassment. The POP further determined that the time bar under § 315(b) is one of several factors that may be considered when exercising that discretion. The POP explained that other factors to be considered can include the stage and schedule of an existing IPR proceeding, and events in other proceedings related to the patent at issue.

With respect to Proppant, the POP upheld denial of the motion for joinder based on the conduct of the petitioner that prompted the second IPR filing. The POP also upheld denial of the second petition, finding that§ 315(b) barred the petitioner from filing the second IPR petition.