The PTAB has interpreted the joinder provisions to deny joinder if the joinder petitioner is already a petitioner in the pending IPR. Target Corp. v Designation Maternity Corp., IPR2014-00508 (paper 18, September 25, 2014), an expanded panel of the PTAB denied a motion for joinder that accompanied a petition filed more than one year after Target had been sued for infringement. The PTAB decided that joinder of petitions is permitted only when the party filing the second petition is not the same as a party to the pending IPR proceeding. Thus, as a matter of statutory interpretation, a second petition by the same petitioner can never be joined with a prior petition. If the second petition is filed after the one year date, it will be denied. Even if within the one year period, it may still be denied if it raises the same or substantially the same issues.
The June 2014 U.S. Supreme Court’s Alice Corp. decision has enhanced the ability to win CBM challenges. Salesforce.com Inc. successfully invalidated U.S. Patent No. 8,095,413 in CBM2013–00024. The PTAB said that “We find that the challenged claims are directed to an abstract idea, the creation and use of models to aid in processing management information by organizing and making the information readily accessible by the collaborators of the project.”
Section 325 of the AIA (America Invents Act) says that “a post-grant review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” The PTAB in Securebuy v. CardinalCommerce (CBM2014-00035, Patent 7,051,002) held that a prior declaratory relief action by SecureBuy foreclosed filing a CBM. The designation of the ruling by the PTAB as precedential means that future PTAB judges must adhere to the ruling’s precedent unless it is “overcome by subsequent binding authority.” The decision was actually entered on April 25, 2014, but the PTAB waited until now to designate it as precedential.
The Federal Circuit reversed an order of Judge Rodney Gilstrap of E.D. Texas denying a stay of district court litigation pending USPTO review of U.S. Patent No. 8,095,413 under the Transitional Program for Covered Business Method Patents (CBM). AIA § 18(b)(2) provides for immediate interlocutory appeal to the Federal Circuit from a district court’s decision regarding a stay. VirtualAgility Inc. v. SalesForce.com, Appeal No. 2014-1232, (Fed. Cir. July 10, 2014) was the first such appeal.
The PTO published “Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board” (Federal Register / Vol. 79, No. 124 / Friday, June 27, 2014, p. 36474). Comments are requested by Sept. 16, 2014 on a variety of issues, such as which Claim Construction Standard to use, motions to amend, and a variety of other questions.
An inter partes review challenging the validity of a patent is normally barred after one year from service of a complaint. However, 35 USC § 315(b) says the time limit doesn’t apply to a motion to join, which has been interpreted to allow filing an IPR after one year with a motion to join the other IPR. The window for doing this is within one month of institution of the IPR to be joined (37 CFR § 42.122(b)). This situation often occurs in multicase, multidefendant litigation. The question then becomes should you join, and if so, how? The classic way to join is to simply file a new IPR and copy the pending one. Some differences in new arguments and new prior art on dependent claims have been allowed in certain cases, but significant changes will result in denial of the joinder petition. Recent cases give some examples which provide guidance.
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