PTAB Strategies and Insights - October 2020: Joinder Petitioner Has Different § 315(e)(2) Estoppel Than Original Petitioner

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne, Kessler, Goldstein & Fox P.L.L.C.

In Network-1 Technologies, Inc. v. Hewlett-Packard Company, the Federal Circuit vacated and remanded the district court’s holding that joinder petitioner Hewlett Packard (“HP”) (1) could have tried to raise new grounds in its joinder petition and thus (2) was estopped from using those unraised positions during district court trial. Network-1 Techs. v. Hewlett-Packard Co., Case No.18-2338, Slip Op. at 17-21 (Fed. Cir. Sept. 24, 2020). The issue of joinder petitioner estoppel reached the Federal Circuit on appeal from a JMOL on invalidity. Id.

In the underlying case, the district court held “in contrast to the Fisher system, which was not a patent or printed publication that HP ‘reasonably could have raised’ in the IPR, HP could have reasonably raised its remaining invalidity arguments during the IPR—i.e., the Fisher patents, Woodmas, and Chang.” Id. at 18. The district court explained “the fact that HP sought joinder with Avaya’s [inter partes review (IPR)] does not mean that HP could not have reasonably raised different grounds from those raised by Avaya” and that “allowing HP to raise arguments ‘that it elected not to raise during the IPR would give it a second bite at the apple and allow it to reap the benefits of the IPR without the downside of meaningful estoppel.’” Id.
The Federal Circuit disagreed stating “the joinder provision does not permit a joining party to bring into the proceeding new grounds that were not already instituted.” Id. (internal citations omitted.) The Court explained “a party is only estopped from challenging claims in the final written decision based on grounds that it ‘raised or reasonably could have raised’ during the IPR. Because a joining party cannot bring with it grounds other than those already instituted, that party is not statutorily estopped from raising other invalidity grounds [in district court].” Id. at 19. “HP first filed a motion to join the Avaya IPR with a petition requesting review based on grounds not already instituted. The Board correctly denied HP’s request. The Board, however, granted HP’s second joinder request, which petitioned for only the two grounds already instituted.” Id.
The Court also explained “HP, however, was not estopped from raising other invalidity challenges [in district court] against those claims because, as a joining party, HP could not have raised with its joinder any additional invalidity challenges. Thus, contrary to the district court’s suggestion, permitting HP to challenge the asserted claims of the ’930 patent as obvious over the Fisher patents, Woodmas, and Chang does not give HP a ‘second bite at the apple’ to challenge the ’930 patent…because HP could not have raised such a challenge in the Avaya IPR.” Id. at 20. “Accordingly, we conclude that HP was not statutorily estopped under § 315(e) from challenging the asserted claims of the ’930 patent based on the Fisher patents, Woodmas, and Chang, which were not raised in the Avaya IPR and which could not have reasonably been raised by HP.” Id.
Take away: Joinder petitioners seem to have a free pass at the district court to assert new invalidity challenges not found in the Petition they are joining,  if any claims survive the underlying AIA proceeding.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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