Federal Circuit - Network-1 Technologies, Inc. v. Hewlett Packard - Joining Party Can Challenge Validity On Different Grounds Than Raised in IPR

In Network-1 Technologies, Inc. v. Hewlett Packard, the Federal Circuit held that a party joining an inter partes review (IPR) before Patent Trial and Appeal Board (PTAB) can later challenge patent validity in court as long the challenge is based on different grounds than those raised earlier in the IPR. 

As a reminder, 35 U.S.C. § 315(e) estops a petitioner from challenging patent claims in court on grounds it "raised or reasonable could have raised" after a final decision in an IPR. The Federal Circuit explained a joining party is not estopped from raising grounds different than those when the IPR was instituted. In short, a party is only estopped from challenging in court on the grounds it "raised or reasonably could have raised" in the IPR.

Copyright © 2020 Robert Moll. All rights reserved.

PTAB - Denies Issue Joinder under 35 USC 315(c)

In Target Corp. v. Destination Maternity Corp., the Patent Trial and Appeal Board (PTAB) held that joinder under 35 USC 315(c) applies only to different parties and not to petitions filed by the same party.

Under 35 USC 315(b), inter partes review may not be instituted if the petition requesting it is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

Target had filed a second petition for inter partes review after the one-year window to attack a patent claim that was excluded from the trial order of its first petition. Target requested under 35 USC 315(c) that the Director exercise discretion to join it as "any party" to that first inter partes review.

The PTAB held the petition was too late under 35 U.S.C. § 315(b) and denied joinder stating a petitioner filing a second petition after the one-year window cannot join as "any party" to its first petition because it is already a party.

The PTAB also stated absence from the statute of an express prohibition against joining another petition to an instituted inter partes review does not inform whether the authority to do so has been granted.

Copyright © 2014 Robert Moll. All rights reserved.