With the Patent Trial and Appeal Board's decision in Proppant Express Investments LLC v. Oren Technologies LLC, accused infringers should be cognizant of their newfound ability to initiate inter partes review proceedings beyond the one-year statutory bar date, even though there are only “limited circumstances” in which doing so is appropriate. However, accused infringers should also be wary of relying on the PTAB Precedential Opinion Panel's Proppant Express holding until after the U.S. Court of Appeals for the Federal Circuit has affirmed the decision on appeal.
A general requirement for the filing of inter partes review petitions is that they must not be filed “more than one year after the day on which the petitioner … is served with a complaint alleging infringement of the patent.”[1] Since the implementation of IPR proceedings in 2012, this language has generally been viewed by practitioners as establishing an absolute bar to the filing of a petition beyond the one-year deadline. The only established exception to this requirement was that other parties (i.e., parties other than the petitioner itself) could join a previously instituted petition even after the one-year bar.
However, an additional exception arose when the Precedential Opinion Panel of the Patent Trial and Appeals Board issued a precedential opinion in Proppant Express v. Oren.[2] That opinion officially opened the door for petitioners to raise new issues, such as new grounds for invalidity, even after the one-year bar date.
Proppant Express held that, in limited circumstances, the PTAB will allow petitioners to use the joinder provision set forth in 35 U.S.C. § 315(c) to join their own previously instituted IPR petition, even if new issues are raised in the motion for joinder and even if the motion for joinder is filed after the one-year statutory bar. Going forward, the PTAB will exercise its discretion to allow a petitioner to “self-join” its own previously instituted petition “only in limited circumstances — namely, where fairness requires it and to avoid undue prejudice to a party.”[3]
Proppant Express only provides one example of circumstances that may justify self-joinder after the one-year bar — i.e., the belated addition of newly asserted patent claims by the patent owner in a co-pending litigation.[4] However, there are several other circumstances that could possibly lend themselves to permissible self-joinder.
For instance, if a patent owner withholds critical prior art in a co-pending litigation when it had a discovery obligation to produce that art, it could be deemed unfair to prohibit the petitioner from relying on that prior art as part of a self-joinder motion filed after the one-year bar. Consider a situation where a patent owner was previously presented an unfiled, draft IPR petition (also referred to as a “dark IPR”) by a previous litigation defendant, but the patent owner improperly withholds production of the draft petition to a later defendant in response to a discovery request.
In that case, a petitioner may argue to the PTAB that fairness and the need to avoid undue prejudice supports allowing self-joinder of a petition that asserts the prior art raised in the draft petition. The success or failure of such an argument will likely be fact-specific. If the prior art in the draft petition was cited on the face of the challenged patent, the PTAB could find that the petitioner should have been aware of its significance prior to filing its original petition and, therefore, deny the request for self-joinder. Yet, if the prior art raised in the draft petition is prior art that is not cited on the face of the challenged patent, the PTAB may find that self-joinder is permissible because the petitioner would have known of the prior art reference but-for the patent owner improperly withholding it in the litigation.
As another example, if a patent owner’s technical expert or the patent inventor in co-pending litigation provides unexpected testimony that supports new grounds for invalidity, it may be found that fairness also justifies allowing the petitioner to self-join after the one-year bar to add those new grounds.
For instance, in patent litigation many district courts require a patent owner to provide all evidence of conception and reduction of practice of the invention early in the litigation process. A petitioner may rely on those documents to determine whether prior patents or patent publications constitute prior art under 35 U.S.C. § 102(e), and may decide not to include prior art in an IPR petition that would not qualify under § 102(e).
Thus, assume that a patent owner provided evidence reflecting a conception and reduction to practice date of Jan. 1, 2010. If that date is accurate, it would mean that patents and patent application publications filed after that date could not be prior art. However, if evidence is subsequently discovered that the Jan. 1, 2010, date was incorrect or altered, and the invention was truly conceived and reduced to practice on Sept. 1, 2010, then all patents and published patent applications filed between Jan. 1, 2010 up to the Sept. 1 date would qualify as prior art. In this scenario a petitioner may then argue to the PTAB that self-joinder is permissible to assert newly qualified prior art, because it would be unfair and prejudicial given that petitioner relied on patent owner’s false assertions as to the appropriate conception date.
While there are likely other unforeseen circumstances that could give rise to self-joinder by a petitioner, Proppant Express makes it clear that where a petitioner’s own conduct “creates the need for it to request joinder” then a motion for self-joinder will be denied. Proppant Express provides a concrete example where the petitioner sought self-joinder to correct a mistake or oversight in its originally instituted petition. The PTAB denied the request, finding that neither fairness nor the need to avoid undue prejudice justified allowing the petitioner to correct a mistake it could have avoided with appropriate diligence.
Thus, petitioners should exercise caution when preparing an IPR petition to ensure that they are not making strategic decisions that may ultimately be viewed as an “oversight” or “mistake” on the part of the petitioner. For instance, even in the lone example of possibly permissible “self-joinder” provided in Proppant Express, one could still argue that the petitioner “create[d] the need for it to request joinder” if the facts permit. A patent owner may argue, for example, that newly added patent claims were necessitated by the petitioner’s belated production of documents relating to a previously undisclosed infringing product model. If true, the PTAB could conclude that it was the petitioner’s failure to produce documents relating to the undisclosed infringing model that necessitated the addition of the new claims, as opposed to gamesmanship of the patent owner.
While Proppant Express provides accused infringers an avenue for initiating IPR proceedings after the one-year bar, would-be petitioners should still take reasonable steps to avoid the need to rely on self-joinder in the first place. For one, whether the PTAB permits self-joinder is discretionary and, therefore, it is difficult to definitively determine whether a given set of facts will give rise to self-joinder.
Second, filing an additional petition with a motion for joinder is expensive, even if the newly raised issues are similar to those raised in the originally instituted petition. Indeed, the filing fees for a petition alone are over $30,000, even for one filed as part of a motion for self-joinder.
Third, some of the circumstances giving rise to the need for self-joinder can easily be avoided by carefully drafting the original IPR petition. For example, it is always best practice for a petitioner to challenge all patent claims that have been or could reasonably be asserted in litigation, even if the patent owner has not asserted all of those challenged claims in the co-pending litigation. In doing so, the petitioner can avoid the need to move for self-joinder due to the belated addition of asserted claims in the litigation.
Fourth, and perhaps most important at this moment, Proppant Express (or a later case raising the same issue) could be appealed to the Federal Circuit, and so there is at least a possibility that its holding could be reversed. As such, the strategic decision by a petitioner to rely on self-joinder in view of Proppant Express could ultimately leave the petitioner in a vulnerable position.
“The PTAB's New, Narrow Avenue for Filing Late IPR,” by Stephen D. Zinda and James H. Hall was published in Law360 on April 18, 2019. Reprinted with permission.
[1] 35 U.S.C. § 315(b)
[2] Proppant Express Investments LLC v. Oren Technologies LLC, IPR2018-00914, Paper 38 (PTAB March 13, 2019).
[3] Id. at 4.
[4] Id.
