The PTAB denied Apple’s motion to withdraw both its IPR petition and concurrent motion for joinder to prevent Apple from circumventing potential estoppel ramifications in Apple Inc. v. Papst Licensing GmbH & Co. KG, IPR2017-00670, Paper 11 (P.T.A.B. May 22, 2017).

Apple filed a petition and motion for joinder seeking to join an instituted IPR against Papst’s patent.  Apple had previously filed three other petitions against Papst’s patent, and various third parties had filed eight other petitions against the patent.  Papst waived its right to file a preliminary response to Apple’s current petition, and it did not oppose the motion for joinder. 

After Papst’s waiver, Apple filed a motion to withdraw the current petition and its motion for joinder.  Apple’s motion requested dismissal without a final written decision, arguing that dismissal would preserve the PTAB’s and parties’ resources and Papst would not be prejudiced by dismissal.  Apple’s motion did not otherwise explain why it wanted to withdraw the current petition. 

Papst opposed the motion, arguing that the purpose of Apple’s motion was to avoid the estoppel consequences that would arise from any final written decision in the IPR Apple originally sought to join. According to Papst, “Apple now has seen which of its initial three challenges to [Papst’s] patent have hit the mark, which have missed, and now apparently wants some of its prior art ammunition back.”

The PTAB agreed with Papst, determining that Apple’s requested relief would essentially allow Apple to avoid the estoppel consequences that might arise from the instituted IPR it originally sought to join.  Therefore, the PTAB denied Apple’s motion to withdraw its petition and motion for joinder.