A Federal Circuit panel may toss so-called “issue joinder” from inter partes review proceedings after hearing oral arguments last month in Nidec Motor Corporation v. Zhongshan Broad Ocean Company. Issue joinder allows the same party to raise new issues in separate proceedings and then join them. Continue reading Federal Circuit May Be Poised to Eliminate Issue Joinder
A panel of judges at the Patent Trial and Appeal Board (“the Board”) recently estopped a Petitioner from joining a petition for inter partes review under 35 U.S.C. § 315(e)(1). The panel’s order denying institution and joinder is notable for its interpretation of the Federal Circuit’s decision in Shaw Industries Group v. Automated Creel Systems, Inc. 817 F.3d 1293 (Fed. Cir. 2016). The panel’s interpretation is markedly different from an earlier application of that case by Judge Robinson of the U.S. District Court for the District of Delaware.
A recent decision at the PTAB highlights one of the difficulties faced by parties and practitioners before the Board: the potential for conflicting decisions in a forum where almost nothing is considered precedential.
Earlier this month an expanded panel re-visited the question of whether a Petitioner may join its own previously-instituted Petition for Inter Partes Review. Consistent with earlier decisions, this expanded panel concluded that so-called “issue joinder” (the same party joining new issues to an instituted petition) is permissible under 35 U.S.C. § 315(c). Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2015-00762 (PTAB October 5, 2015) (Paper 16). Continue reading Lack of Precedent at PTAB Can Lead to Conflicting Panel Decisions
A review of patent owners’ Oppositions to Joinder shows three common arguments against joining inter partes reviews: the lack of availability of issue joinder, the failure of joinder to simplify issues before the Board, and the inequity of allowing joinder. This post explores counter-arguments which can be used by a Petitioner when bringing a Motion for Joinder of IPRs
The joinder of inter partes reviews is left to the discretion of the Patent Trial and Appeals Board (“the Board”). 35 U.S.C. § 315(c) (“the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.). Continue reading Overcoming Common Arguments Against Joinder of IPRs