By Tim Heverin

In September, the Patent Office revised Standing Operating Procedure 2 (available here) to create a new review path for designating opinions precedential or informational.  See PTAB Litigation Blog discussion of SOP 2 here.  Under the new rule, the review is performed by the Precedential Opinion Panel (“POP”), a three person panel consisting of the USPTO Director, the Commissioner for Patents and the PTAB Chief Judge, or their designees.  The POP will take up its first case in Proppant Express Investments, LLC. v. Oren Technologies, LLC, Case IPR 2018-00914.

As discussed here, in Proppant Express, the underlying panel held that 35 U.S.C. § 315(c) did not authorize same-party joinder, that is, joinder of an IPR raising new issues to a previously-instituted IPR brought by the same party.  As a result, it found petitioner PropX’s second IPR to be litigation time-barred and denied institution.  In reaching its decision, the panel pointed to the plain language of the statute and cited the Supreme Court’s SAS Institute for the proposition that “the Director may not deviate from statutory directives, even if policy considerations suggest doing so.”  Id. (Nov. 8, 2018) (Paper 21) (citing 138 S. Ct. at 1358-59). 

PropX requested rehearing, which the POP awarded, finding that Proppant Express conflicted with past PTAB decisions.  Upon rehearing, Director Iancu, Commissioner Hirshfield and acting Chief Judge Boalick will consider three issues:

  1. Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
  2. Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
  3. 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?

Id. (Dec. 3, 2018) (Paper 24).  The POP authorized supplemental party and amicus briefing to take place in December and January.  Will Director Iancu and the other POP members find that the Director does indeed have authority to permit same-party joinder under Section 315(c)?  Stay tuned.

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For 20 years, Tim Heverin has represented clients in high-value patent and trade secret disputes, often involving international actors, activity, and witnesses. Tim has extensive experience litigating life science patent disputes. He has represented clients in matters concerning pharmaceutical and biologic products such as Prezista®, Hytrin®, Tricor®, Istodax®, and Kuvan®. He recently was part of the team that successfully defeated an institution of four IPRs and defended a separate interference action related to formulation patents for top-selling drug, Humira®.