The complex nature of modern patent litigation has meant that multiple defendants often have interests that align around a single portfolio of patents. This inevitably results in one or more post-grant challenges. The natural desire for each party to present its own validity defense can result in a large number of post-grant petitions.
As noted elsewhere in this report, the PTAB often considers joinder in association with 35 U.S.C. § 325(d) as a way of managing the complexity imposed by a large number of challenges. Once two proceedings had been joined, the PTAB often sought to simplify the proceedings in 2015 by mandating that all correspondence flow through the senior Petitioner, where the senior Petitioner is typically the first filer. Thus, the PTAB has seemingly been responsive to concerns by junior Petitioners that a proceeding could settle and be terminated without an opportunity for them to avail themselves of the validity questions raised by the senior Petitioner. In balancing these concerns, the PTAB has allowed parties to liberally join using nearly identical petitions with a request for joinder under 35 U.S.C. § 315(c). Of more than 174 joinder motions filed in 2015, 74% were granted. This rate is markedly increased from granted joinder motions at a rate of 61% in 2014 and 53% in 2013, and is believed to reflect the PTAB’s increased reliance on 35 U.S.C § 325(d). The acceptance rate for joinder motions is below 50% so far in 2016, across 13 requests for joinder.
A brief survey of the reasons for denial of a request for joinder includes concerns about the impact of ongoing proceedings. In the case of IPR2015-01053, the PTAB declined to join a Petitioner filed more than one year after the proceedings where the Petitioner was previously denied institution and filed after the statutory bar by including a new ground for rejection. In the case of IPR2015-01091, the petition was denied for being filed more than three months after the institution date of the earlier petition in which the junior Petitioner sought joinder. The Board in this proceeding went to great lengths to contrast the present proceedings, in which a newly filed petition was being considered, relative to IPR2013-00495, in which the Petitioner sought to join an earlier-filed proceeding on identical grounds.
The PTAB has generally vested the senior Petitioner filing the earlier-considered petition with sole responsibility for preparing a response in joined proceedings. For example, in a scheduling order involving CBM2015-00059, the PTAB joined a junior Petitioner involved in a later-considered petition to earlier-instituted proceedings.
However, the PTAB charged the senior Petitioner involved with the earlier-instituted petition with sole responsibility for filing all joint motions and, conducting cross-examinations, and also noted that the Patent Owner is not required to provide separate discovery responses or additional deposition time as a result of the consolidation. The deference to the senior Petitioner also extended to the oral hearing, where the PTAB allocated time in all proceedings only to the senior Petitioner, and noted that the senior Petitioner is “free to divide the time among the cases as they choose.”
The PTAB tried to strike a compromise that balances the desire for judicial efficiency and prompt resolution of post-grant proceedings in a way that also serves the public interest function in adjudicating exclusive rights. The PTAB struck this balance in 2015 by granting an increased number of joinder motions, albeit often limited to existing records, while preventing junior parties from presenting additional evidence and more current briefing on additional case law.
This article originally appeared in Fish’s 2015 Post-Grant Report. Read the full report here.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes and is not intended to be and should not be taken as legal advice.
Tom Rozylowicz is a Principal in the Washington, D.C.* office of Fish & Richardson P.C. His practice includes all aspects of intellectual property law, with particular emphasis on patent procurement, post-grant America Invents Act (AIA) proceedings, and licensing in the software,...