Termination of IPR Proceeding on the Eve of Final Written Decision Dooms Joinder Attempt

May 17, 2024

Reading Time : 2 min

The Patent Trial and Appeal Board has denied institution and joinder of an inter partes review petition after determining that the petition was not only time-barred but that joinder was also foreclosed. In making its determination, the board found that the concurrent motion for joinder was not proper because the IPR proceeding sought to be joined had just been terminated due to settlement.

The challenged patent was directed to wireless communication using directed communication beams emanating from an antenna. Petitioner filed its petition for IPR more than two years after it had been served with a complaint alleging infringement of the challenged patent. Concurrently with its petition, petitioner filed a motion for joinder, seeking to be joined as a party with an earlier IPR in which claims of the same patent had been challenged.

Under 35 U.S.C. § 315(b), an IPR “may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” However, § 315(b) further provides that the time limitation does not apply when the petition is accompanied by a request for joinder. Here, petitioner filed its petition more than one year after it was served with a complaint alleging infringement of the challenged patent, and petitioner accompanied its IPR petition with a motion for joinder.

But the IPR proceeding to which petitioner sought to be joined had been terminated days before petitioner filed its petition. Although petitioner also sought leave to file a motion to reopen the earlier IPR, the board denied petitioner’s request. Because there was no IPR to join, the board denied the motion for joinder. Consequently, the provision in § 315(b) that would have permitted the time-barred petition was not applicable.

Practice Tip: If a petition is subject to the one-year time bar of 35 U.S.C. § 315(b), a request for joinder can be a useful strategy to circumvent that bar. Under the board’s procedures, however, a motion for joinder should generally be filed within a month of institution. Here, petitioner failed to move for joinder within a month of institution or at any time during the pendency of the earlier IPR proceeding. Any delays in both filing a petition and in requesting joinder carry significant risk for a petitioner, including the possibility of being foreclosed from joining an earlier proceeding that has been terminated.

Ubiquiti Inc., v. XR Commc’ns, LLC, IPR2024-00148, Paper 12 (P.T.A.B. May 6, 2024).

Share This Insight

Previous Entries

IP Newsflash

November 1, 2024

The Federal Circuit’s decision in Kyocera Senco Industrial Tools Inc. v. International Trade Commission articulated a bright-line test for patent expert admissibility: to testify from the perspective of a “person of ordinary skill in the art” (POSITA), the expert must at least meet the definition of a POSITA for the patents-in-suit. Absent that level of skill, Kyocera holds that the witness’s testimony is not sufficiently reliable or relevant enough to be relied on by a fact-finder.

...

Read More

IP Newsflash

October 29, 2024

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent owner had not taken inconsistent positions but warned patent owner that it had an ongoing duty to produce any information inconsistent with arguments made during the present IPR, even if that information related to arguments patent owner had dropped at the ITC.

...

Read More

IP Newsflash

October 11, 2024

The Central District of California ruled that the heightened pleading standard of Federal Rule of Civil Procedure 9(b) applies to all three prongs of a false patent marking claim, including the third prong, competitive injury. In doing so, took a clear stand on an issue with a nationwide split among district courts.

...

Read More

IP Newsflash

October 3, 2024

The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously declared unpatentable in inter partes review (IPR) proceedings. However, the court clarified that the regulation applies only to new claims or amended claims, not previously issued claims.

...

Read More

IP Newsflash

September 27, 2024

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert must meet the definition of a “person of ordinary skill in the art” of the asserted patents in order to opine on infringement, among other issues. This new bright-line test and the underlying rationale, however, raised several new questions regarding expert admissibility. SeeFederal Circuit: Narrow Definition of Skill in the Art Dooms Expert’s Testimony” and “Grappling With A Bright-Line Patent Expert Admissibility Test.” The Federal Circuit recently addressed one of those questions, namely whether an expert must have acquired the requisite level of skill as of the time of the invention or whether it is sufficient for an expert to acquire that knowledge at a later date.

...

Read More

IP Newsflash

September 23, 2024

The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings. The PTAB cancelled all of patentee’s claims, including those not unpatentable on the merits, after finding that patentee deliberately withheld data relevant to the patentability of the claims at issue. In her review, the Director addressed which regulations are implicated upon a party’s misconduct during AIA proceedings and addressed whether entry of judgment in the trial was an appropriate sanction.

...

Read More

IP Newsflash

September 18, 2024

The Western District of Texas granted a motion to stay a patent infringement lawsuit pending inter partes review not only because doing so would simplify the issues in the still-early litigation and reduce the burden on the parties, but also because the non-moving party failed to diligently file its lawsuit despite a protracted negotiations period.

...

Read More

IP Newsflash

September 16, 2024

The Federal Circuit dismissed an appeal from an inter partes review (“IPR”) final written decision for lack of standing where it found the appellant failed to provide evidence sufficient to show it suffered an injury in fact.

...

Read More

© 2024 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.