Proppant Express v. Oren Technologies (IPR2018-00914): Same-Party and Issue Joinder under § 315(c)

Section 315(c) lets the Director join “as a party” to an instituted inter partes review “any person who properly files a petition” that warrants institution, and § 315(b) says the one-year time bar does not apply to a request for joinder. Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914 (Paper 38, March 13, 2019), addressed whether a petitioner can use that provision to join itself, with a new ground, to its own pending case. The decision was issued by a Precedential Opinion Panel made up of the USPTO Director, the Commissioner for Patents and the Acting Chief Administrative Patent Judge, and was designated precedential. Its statutory reading was later rejected by the Federal Circuit, as explained below.

A companion note covers an RPI order between the same parties, Proppant Express v. Oren, IPR2017-01917.

Background

In IPR2017-02103 the petitioner challenged several claims of Oren’s U.S. Patent No. 9,511,929. The preliminary response pointed out that the ground against claim 4 did not account for all of its limitations, and the Board did not institute on that ground. (This was before SAS Institute Inc. v. Iancu (2018) ended partial institution.) The petitioner then filed a new petition against claim 4 to correct the error, with a motion to join it to the 2103 case. Because the petitioner had been served with an infringement complaint more than a year earlier, the new petition was time-barred unless joinder applied.

The original panel denied joinder, reading § 315(c) to permit joining only other parties, without new issues. The petitioner sought rehearing, and the Precedential Opinion Panel took up three questions: whether § 315(c) allows same-party joinder, whether it allows joinder of new issues, and what role the § 315(b) time bar plays.

What the Board decided

The panel granted rehearing to address the questions but denied joinder and institution.

• Same-party joinder. The panel read “any person” broadly and in harmony with § 311(a), concluding that § 315(c) gives discretion to join a person already a party.
• Issue joinder. Because a joined petition must independently warrant institution under § 314, the panel reasoned that it may raise new grounds, and found support in legislative history.
• The time bar. The second sentence of § 315(b) exempts a petition that accompanies a joinder request from the one-year limit, so the bar is one factor in the discretion. To avoid the exception swallowing the rule, the panel said it would exercise discretion only in limited circumstances where fairness requires it and to avoid undue prejudice, such as a patent owner adding newly asserted claims late in litigation. A petitioner’s own mistakes or omissions generally would not qualify.

Applying that standard, the panel found the joinder request arose from the petitioner’s own error, no fairness or prejudice concern was implicated, and the petition was otherwise time-barred.

Why it matters

For about a year, this decision set Board practice: same-party and issue joinder were possible in principle but rare in practice. Its framing of fairness concerns, including late-added claims in litigation, remains useful background for anyone thinking about how § 315(b) and § 315(c) interact.

Later developments

In Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir. 2020), the Federal Circuit held that § 315(c) does not authorize same-party joinder and does not authorize joinder of new issues, rejecting the reading adopted here. Under that decision, § 315(c) allows the Director to join a person as a party to an existing proceeding, not to add new grounds to it. The statutory holdings of this decision are therefore no longer good law. The rule requiring a joinder motion within one month of institution, 37 C.F.R. § 42.122(b), remains part of the joinder framework; check current USPTO guidance on joinder practice.

Key takeaways

• A Precedential Opinion Panel read § 315(c) to permit same-party and new-issue joinder, subject to narrow discretion.
• It denied joinder because the request only fixed the petitioner’s own error and the petition was time-barred.
• Facebook v. Windy City (Fed. Cir. 2020) rejected that reading: § 315(c) allows neither same-party joinder nor joinder of new issues.
• A petitioner cannot rely on joinder to add new grounds to its own case after the one-year bar.