The Patent Trial and Appeal Board (“the PTAB” or “the Board”) is preparing for its first instance of the newly created Precedential Opinion Panel (POP). Proppant Express Invs., LLC v. Oren Techs., LLC, IPR2018-00914, Paper 24 (PTAB Dec. 3, 2018). Interested parties may have had a busy holiday season, because initial briefing was due on December 28, 2018, to address three questions:
- Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
- Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
- Does the existence of a time bar under 35 U.S.C. § 315(b), or any other relevant facts, have any impact on the first two questions?
Proppant Express and Oren Technologies have been litigating Oren Technologies’ U.S. Patent 9,511,929 (“the ’929 patent”) related to vessels used in hydraulic fracturing. Oren Technologies sued Proppant Express for patent infringement in February 2017. Proppant Express challenged the validity of the ’929 patent by inter partes review (“IPR”) on September 18, 2017. Proppant Express filed an additional IPR petition challenging the same patent on April 16, 2018, and sought to join the new petition to the existing IPR proceeding. The Board denied the joinder and denied institution as a time-barred petition. Proppant Express Invs., LLC v. Oren Techs., LLC, IPR2018-00914, Paper 21 (PTAB Nov. 8, 2018).
The Board’s decision turned on the interpretation and interaction of 35 U.S.C. § 315(b) and (c). Section 315(b) bars institution of an IPR petition filed more than one year after being served a complaint alleging infringement, but it has an exception for joinder. Section 315(c) allows discretionary joining of a party to an instituted IPR. The Board interpreted “join as a party” to not allow joining of new issues—whether raised by the same party or another party. Id. at 4–5. Under this interpretation, the Board denied the request to join that petition, making the second petition time-barred. Proppant Express filed a motion for rehearing and sought review from the POP.
Background on the Precedential Opinion Panel (POP)
The U.S. Patent and Trademark Office (“USPTO”) created the POP in its PTAB Standard Operating Procedures 2 (Revision 10) [SOP2 is available here] as a way “to establish binding agency authority concerning major policy or procedural issues.” Any member of the Board or any party to the proceeding may recommend an issue for POP review. A party seeking POP review follows the regular procedures to make a request for rehearing, but additionally sends an email to [email protected] The email contains a brief description of the issue(s) the POP should review by including one of the following paragraphs:
Based on my professional judgment, I believe the Board panel decision is contrary to the following decision(s) of the Supreme Court of the United States, the United States Court of Appeals for the Federal Circuit, or the precedent(s) of the Board: (provide cites to specific decisions)
Based on my professional judgment, I believe the Board panel decision is contrary to the following constitutional provision, statute, or regulation: (cite the specific provision, statute, or regulation)
Based on my professional judgment, I believe this case requires an answer to one or more precedent-setting questions of exceptional importance (set forth each question in a separate sentence).
If the request for POP review is granted, the Director of the USPTO convenes a panel, notifying the parties and public of the issues to be resolved, and the composition of the panel. The Director may allow additional briefing—including amicus briefs—and may include an oral hearing. Unlike other PTAB decisions, POP decisions are precedential unless designated as routine or informative.
The POP in the Present Case
The POP review in Proppant Express exemplifies the new procedures. The panel members for the POP are those described in the SOP2: the Director of the USPTO, the Commissioner of Patents, and Chief Administrative Patent Judge. The POP recognized that PTAB decisions have disagreed on the proper interpretation of § 315(c), making a precedential decision on the topic ripe. The POP allowed additional briefing by the parties, and authorized amicus briefs as well, both due December 28, 2018. The parties will discuss the need for an oral hearing in their briefing, and the POP has authorized responses to the briefs to be filed on January 14, 2019.
Hopefully this case will demonstrate how the new POP review procedures can resolve unsettled issues at the PTAB and bring more consistency among its decision makers. We will provide updates to this developing area of IPR law and review procedures.