In September 2018, the Patent Trial and Appeal Board (PTAB) created a Precedential Opinion Panel (POP) to establish binding authority before the PTAB.1 It is intended to serve two primary functions: rehear matters in pending trials and appeals of exceptional importance; and assist the Director in determining whether a previously issued decision should be designated as precedential or informative. The USPTO expects that it will result in more decisions being designated as precedential, effectively doing away with the previous procedure of having precedential designations put before the full PTAB. So far, the POP has issued one precedential decision on joinder, is currently hearing another on proving status of a printed publication, and recently agreed to hear another on time bars for IPRs.
Any party to a proceeding may request a POP review of a particular PTAB decision, typically as part of a request for rehearing. Based on the recommendation from a Screening Committee, the Director may order a POP review. The POP typically includes the Director, the Commissioner for Patents, and the Chief Judge of the PTAB who decide the merits. Unless otherwise designated, the POP decision sets forth binding agency authority.2
Joinder is a process by which a second petition can be consolidated with an earlier-filed IPR concerning the same patent. Joinder is at the Director’s discretion if the second petition meets the requirements set forth in 35 USC §315(c):
"If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314."
Thus, Joinder of a second petition is possible if there is an earlier instituted IPR and the second petition separately warrants institution.3 Perhaps importantly, the one-year time bar for filing petitions after a party is sued for infringement (separately set by statute) does not apply to a request for joinder.4 This interplay led to situations where a petitioner, sued for infringement, sought to add new grounds and challenges to its own earlier-filed petition after it would otherwise be time-barred if those challenges were raised in a separate petition.
Before Proppant, the PTAB did not consistently decide this issue. For example, in SkyHawke Techs., LLC v L&H Concepts, LLC,5 the PTAB denied joinder and did not permit a petitioner to add new issues to an existing petition it already filed. The PTAB did not specifically discuss the time-bar when denying the motion, but instead concluded that the statute only provides for joinder of a person who is not already a party to the proceeding. Th at is, according to the PTAB, the same party cannot be “joined” to its earlier petition because it is already a party in that proceeding. Specifically, the panel explained that the statute “does not refer to the joining of a petition or new patentability challenges” but to joining a party.
A different panel reached the opposite conclusion in Zhongshan Broad Ocean Motor Co Ltd v Nidec Motor Corp6 There, the PTAB allowed joinder of a new issue by the same party, although it was raised after the one-year time bar. On appeal,7 the Federal Court affirmed the PTAB decision on other grounds but “seriously questioned” the PTAB’s interpretation of the statute. In particular, the Federal Circuit stated:
"[w]e think it unlikely that Congress intended that petitioners could employ the joinder provision to circumvent the time bar by adding time-barred issues to an otherwise timely proceeding, whether the petitioner seeking to add new issues is the same party that brought the timely proceeding, as in this case, or the petitioner is a new party."
This question of joining issues brought by the same party after the time bar was raised again in Proppant and split into two questions:
1. Whether §315(c) permits a petitioner to be joined to a proceeding in which it was already a party (regardless of the issues)?
2. Whether §315(c) permits joinder of new issues into an existing proceeding (regardless of the party)?
The petitioner filed a first petition against certain claims of a challenged patent. The PTAB instituted review of some of the claims but denied institution against one of the claims because the petitioner failed to adequately set forth a challenge to it.8,9 Aft er institution, the petitioner sought relief to amend its petition to get the denied claim under review in the first IPR. The PTAB denied the request explaining that the petitioner was not diligent in noticing the error and did not seek to correct it until after institution, even though the patent owner raised the issue in its preliminary response.10
After the PTAB denied the petitioner’s request, it filed a second petition challenging only the claim that was previously denied and requested joinder with its first petition.11 The motion for joinder was necessary because the second petition was filed after expiration of petitioner’s one-year time bar.12 The PTAB denied the petitioner’s second petition and joinder request.13 In the PTAB’s view, the second petition was time-barred and introducing a new issue into the existing proceeding would have been contrary to the PTAB’s practice of expediting. The PTAB also referred to the Federal Circuit’s comments in Nidec Motor Corp. and agreed that:
"it [was] unlikely that Congress intended that petitioner could employ the joinder provision to circumvent the time bar by adding time-barred issues to an otherwise timely proceeding."
The petitioner requested rehearing and requested POP review, which was ordered to address the following questions:
1. Under 35 USC §315(c), may a petitioner be joined to a proceeding in which it is already a party?
2. Does 35 USC §315(c) permit joinder of new issues into an existing proceeding?
3. Does the existence of a time bar under 35 USC §315(b), or any other relevant facts, have any impact on the first two questions?14
Although the POP ultimately denied the petitioners’ second petition and request for joinder, the POP answered the first two questions affirmatively – a petitioner may be joined to a proceeding in which it is already a party, and the PTAB has discretion to allow joinder of new issues in an existing proceeding – and it acknowledged that the existence of a time bar under 35 USC §315(b) is one of several factors to consider when exercising its discretion.15 Although the POP held that the PTAB has the discretion to join the same party and new issues to an already instituted proceeding (even after the timebar), it noted that the PTAB would:
"exercise this discretion only in limited circumstances – namely, where fairness requires it and to avoid undue prejudice to a party. Circumstances 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. On the other hand, the PTAB does not generally expect fairness and prejudice concerns to be implicated by, for example, the mistakes or omissions of a petitioner."
Same-party joinder Focusing on the “language of the statute,” the POP stated that the statute “provides discretion to ‘join as a party… any person who properly files a petition” that warrants institution of an IPR.16 The POP indicated that “any” ordinarily implies “every member of the class or group” and interpreted “any person” to include a person who is already a party in a proceeding.17
The POP recognized the potential for gamesmanship by a petitioner filing a first petition with some grounds of unpatentability and then filing a second petition to strengthen its case after it saw its opponent’s arguments. Noting this concern, the POP stated that “[p]erhaps cognizant of these possibilities, Congress provided discretion in [the statute] and not a per se rule one way or the other.”18 The POP explained that the PTAB will exercise this discretion only where fairness requires it and to avoid undue prejudice to a party.19
Issue Joinder
Here the POP based its determination on both the “statutory language” and “legislative history” of the statute. Specifically, the POP explained that “there is no express prohibition [in the statute] against raising new issues.” Also, the POP indicated that:
"[i]f 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.20"
The POP specifically acknowledged the potential for a petitioner to circumvent the statutory time bar through joinder. As it did with same-party joinder, the POP explained that “the PTAB will exercise its discretion to allow a time-barred party to join new issues to an existing proceeding only in limited circumstances.”21
Time-bar Under §315(b)
The POP focused on the statutory language and explained that it specifically provides an exception to the time bar for filing petitions with requests for joinder. The POP also noted that “there is no statutory time limitation… on the filing of a request for joinder.”22 However, the POP explained that when the “petitioner’s own conduct created the need for it to request joinder,” such as the PTAB found in Proppant, the PTAB was unlikely to exercise its discretion and grant joinder.23 The POP emphasized that “allowing joinder in cases such as this could effectively vitiate the time limitation of §315(b) and obviate the careful balance the statute and legislative history contemplate.”24
The POP recently agreed to hear another request in Hulu – this time addressing the required proof needed to establish a reference is a printed publication for purposes of institution. Specifically, the POP will address the question: “[w]hat is required for a petitioner to establish that an asserted reference qualifies as ‘printed publication’ at the institution stage?”25
This issue includes two competing concerns. First, following the guidance in Trivascular v Samuels26, a petitioner would need to establish only a prima facie case that an asserted reference is a printed publication at the institution stage, which is a comparatively low threshold compared to the burden at the final written decision stage. Second, in following the guidance in Intelligent Bio-Sys v Illumina Cambridge, the “petitioner’s case-in-chief” must be made in the petition, including questions related to printed publication.27
Similar to joinder, different panels have decided this issue differently. For example, the PTAB has inconsistently decided whether a copyright date is sufficient to show a document is a printed publication and warrant institution. And the panel in Provepharm Inc v Wista Laboratories, specifically :
"acknowledge[d] that panels have differed on whether a copyright notice is inadmissible hearsay or probative evidence of a printed publication.28"
Looking at the question just based on a copyright, some panels have granted institution, like the panel in Int’l Bus. Machs. Corp. v Intellectual Ventures II LLC, that found a copyright date sufficient for a threshold showing that a document is a printed publication.29 While other panels have denied institution, like the panel in Standard Innovation v Lelo, that found a copyright date inadmissible hearsay.30 This issue of printed publication was also addressed by the Federal Circuit that criticized the PTAB for applying an overly narrow approach when assessing status of prior art.31
History of Hulu
In May 2018, the petitioner sought an IPR of certain claims of US Patent No. 5,806,062 (“the ’062 patent”).32 The petitioner relied in part on a textbook with a copyright year of 1990 against a patent with priority to 1995. The PTAB found the textbook’s copyright date alone did “not indicate anything more than… the date the work was fixed in a tangible medium of expression.”33 Without any indication or showing by the petitioner that the textbook was publicly available, the PTAB denied institution. The petitioner filed a request for rehearing and request for POP review, which was granted.34
Although Hulu raised an issue specific to relying on a copyright date, the POP decided to consider a broader question relating to the proof necessary in a petition to show an asserted reference qualifies as a printed publication at institution. Both parties submitted briefs: the petitioner argued that only a prima facie showing is necessary to meet the “comparatively low threshold” at institution that an asserted reference is a printed publication; the patent owner argued that an “elevated threshold” should apply because the petition was “petitioner’s case-in-chief.”
In addition to Proppant and Hulu, the POP recently agreed to hear a third case to address whether service of an infringement complaint, where the serving party lacks standing to sue or the pleading is otherwise deficient, triggers the one-year time bar. These cases reviewed by the POP panel are in addition to several other PTAB decisions that were recently designated as precedential or informative. It seems that the USPTO is starting to establish more binding authority and possibly provide practitioners with more certainty on the practice and procedure before the PTAB. Stay tuned as we continue to follow the POP and the PTAB’s precedent setting.
Endnotes
1 Revisions to standard operating procedures: paneling and precedential decisions, https://www.uspto.gov/patents-applicationprocess/patent-trial-and-appeal-board/procedures/revisions-standardoperating (last visited 13 May 2019).
2 Standard Operation Procedure 2, https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20FINAL.pdf (last visited 13 May 2019) (discussing procedures to obtain POP review).
3 See 35 USC §315(c).
4 See 35 USC §315(b).
5 SkyHawke Technologies, LLC v L & H Concepts, LLC, IPR 2014-01485 (20 March 2015) (Paper 13).
6 Zhongshan Broad Ocean Motor Co. Ltd. v Nidec Motor Corp., IPR2015-00762 (5 October 2015) (Paper 16).
7 Nidec Motor Corp. v Zhongshan Broad Ocean Motor Co., 868 F.3d 1013 at 1020 (Fed. Cir. 2017).
8 Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2017-02103 (16 March 2018) (Paper 19).
9 The first petition was instituted before the US Supreme Court’s decision in SAS Institute v Iancu when the Board still partially instituted petitions.
10 Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2017-02103 (13 April 2018) (Paper 22).
11 Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2018-00914 (16 April 2018) (Paper 1).
12 Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2018-00914 (16 April, 2018) (Paper 3).
13 Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2018-00914 (8 November 2018) (Paper 21).
14 Proppant Express Invs., LLC et al. v Oren Techs., LLC, IPR2018-00914 (8 November 2018) (Paper 24).
15 Proppant Express Invs., LLC et al. v Oren Techs., LLC, Case IPR2018-00914 (13 March 2018) (Paper 38).
16 Id. at 6 (emphasis in original).
17 Id. at 6 (emphasis in original and further stating that “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.”)
18 Id. at 11.
19 Id. at 4.
20 Id. at 12.
21 Id. at 15.
22 Id. at 17.
23 Id. at 20.
24 Id.
25 Hulu, LLC v Soundview Innovations LLC, IPR2018-01039 (7 January 2019) (Paper 14).
26 Trivascular, Inc. v Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016)
27 Intelligent Bio-Sys. v Illumina Cambridge, Ltd., 821 F.3d 1359, 1369-70 (Fed. Cir. 2016).
28 Provepharm Inc. v Wista Laboratories Ltd., Case IPR2018-00182 (5 July 2018) (Paper 16).
29 Int’l Bus. Machs. Corp. v Intellectual Ventures II LLC, Case IPR2014-00681 (30 October 2014) (Paper 11)
30 Standard Innovation Corp. v Lelo, Inc., Case IPR2014-00148 (23 April 2015) (Paper 41).
31 GoPro, Inc. v Contour IP Holding LLC, 908 F.3d 690, 694 (Fed. Cir. 2018) (stating “[t]he case law regarding accessibility is not as narrow as the Board interprets it.”)
32 Hulu, LLC v Soundview Innovations LLC, IPR2018-01039 (8 May 2018) (Paper 1).
33 Hulu, LLC v Soundview Innovations LLC, IPR2018-01039 (3 December 2018) (Paper 12).
34 Hulu, LLC v Soundview Innovations LLC, IPR2018-01039 (3 April 2019) (Paper 15).
Originally printed in CIPA Journal on June 2019. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm’s clients.
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