Lack of Speed Kills – The Dangers of Waiting in the PTAB

By Ben Snitkoff

Since we last discussed joinder in inter partes review (IPR) proceedings, the Patent Trial and Appeals Board (PTAB) has released two interesting orders that expand the case law on the topic.

In Fifth Third Bank v. Stambler, IPR2014-00244, Fifth Third Bank filed a petition for inter partes review, along with a motion to join IPR2013-00341. The petition was filed on December 9, 2013, more than a year after Fifth Third Bank was served with a complaint alleging infringement of the patent. On December 12, 2013 the Board granted a joint request by the parties to IPR2013-00341 to terminate.

After a conference with the parties, the Board denied the motion for joinder. The Board looked to the statute, 35 U.S.C. §315(c) which states:

If the Director institutes an inter partes review, 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.

The Board reasoned that while the joinder exception to the one-year rule could apply, joinder is only possible “if a review is instituted.” Because the proceeding never instituted, and instead was terminated, Fifth Third Bank could neither take advantage of joinder, nor have its petition instituted on its own, as it was time-barred.

In another recently decided case, the Board denied a petition to join a pre-existing petition involving the same parties and patent. In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00584, Shaw filed a petition for inter partes review along with a motion to join IPR2013-00132. Shaw filed its petition in IPR2013-00132 in February 2013. In July 2013, the Board granted the petition for all but claim 4 of the patent. After applying for rehearing, and having it denied, Shaw filed the instant petition asserting new grounds for review.

In this case, there was an instituted inter partes review proceeding that could be joined. However, any motion to join must be filed “no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b).

The Board found that the September filing date for Shaw’s petition was more than a month after the earlier IPR was instituted, and declined to waive its rules under 37 C.F.R. §42.5. The Board found that there were no special circumstances that justified waiving the rules. Specifically, the Board stated that filing a request for rehearing does not toll the time period for seeking joinder, and that joining the proceedings at this stage would create substantial delays in the earlier IPR.

Both cases emphasize the dangers of sitting on your rights, or biding your time, before the PTAB. If either petitioner had filed their petitions and motions to join a few weeks earlier, they may have been granted.

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