The Post-Grant Strategist

Invalidity grounds in IPR that are not based on patents must be based on printed publications. But the nature of the evidence required at the time of institution to show that a non-patent reference is a printed publication has long been uncertain. The PTAB’s Precedential Opinion Panel (POP) in Hulu v. Sound View Innovations, IPR2018-01039 (Dec. 20, 2019), provided some clarity and left other issues for future PTAB panels to resolve.

The March 2019 decision from the PTAB’s Precedential Opinion Panel (“POP”) in Proppant Express Investments v. Oren Technologies held that petitioners can in some situations join issues to their pending IPRs by filing another petition, even after the one-year time bar would normally bar the petitioner from requesting IPR. But the Federal Circuit recently reversed course in Facebook v. Windy City Innovations, limiting petitioners’ options to avoid the one-year time bar.

Before Windy City, the POP’s decision in Proppant opened the door for so-called same-party joinder of new issues. The POP explained that 35 U.S.C. § 315(c) permits the PTAB to join “any person who properly files a petition” that warrants institution of an IPR. The POP found that “any person” includes the prior petitioner in an already-pending IPR. The POP also found that nothing in section 315(c) prohibits joining new issues to existing proceedings.

(Co-authored by Stuart Duncan Smith)

In the past, moving to amend the challenged claims during IPR was largely futile. The PTAB denied nearly all motions to amend, and many patent owners that might have benefited from amendment chose not to pursue it. But the rules concerning amendment in IPR are changing, and the number and success rate of motions to amend are ticking up. Patent owners have new reasons to think that amendment might save their patents from IPR.

In September 2018, the Patent Office created the Precedential Opinion Panel (or “POP”) to increase transparency and predictability of proceedings before the PTAB by establishing precedent that would guide all PTAB judges. In March 2019, the POP released its first opinion, which held that the PTAB may, in limited circumstances, join both a petitioner to a proceeding in which it is already a party and join new issues to an existing proceeding.