A panel of the Patent Trial and Appeal Board (PTAB) issued a precedential decision March 13, 2019 stating that a party that challenges a patent in an inter-partes review (IPR) proceeding can join their own petition challenging another’s patent, in order to add new issues, but only in limited circumstances.

Here, Proppant Express Investments LLC started an IPR proceeding to challenge a patent of Oren Technologies LLC on technology related to fracking (patent 9,511,929). Proppant Express Investments LLC v. Oren Technologies LLC, Case IPR2018-00914, Paper 38 (Mar. 13, 2019) (designated: Mar. 13, 2019). Proppant then wanted to add new issues, and filed a motion asking to join the IPR as a party in order to raise the additional issues. In its initial decision, the PTAB denied the motion to join, stating that while other parties can join an IPR, new issues cannot be joined in an IPR challenge already filed.

This holding was reversed by a Precedential Opinion Panel. A precedential decision can be cited as establishing a rule or principle. The panel included the Patent Office Director Andrei Iancu, Commissioner of Patents Drew Hirshfeld, and the PTAB Chief Judge Scott Boalick. The Panel decided that so-called “issue joinder” is permissible under 35 USC§315(b) at the discretion of the PTAB. However, the Panel said this can occur only in limited circumstances and went on to deny the issue joinder in this situation. Such limited circumstances, it found, occur “where fairness requires it and to avoid undue prejudice to a party”. An example provided of such limited circumstances are actions taken by a patent owner in a co-pending litigation, such as the late addition of newly asserted claims. The decision added, “On the other hand, the Board does not generally expect fairness and prejudice concerns to be implicated by, for example, the mistakes or omissions of a petition”.

Here, the limited circumstances did not occur, where the purpose of issue joinder was to correct Proppant’s error in the petition filed, and the new petition was filed more than one year from the deadline for filing an IPR. The decision can be reviewed at the USPTO website.