Recently Created USPTO Precedential Opinion Panel to Decide Joinder Issues in First Review

In September, the United States Patent and Trademark Office (USPTO) revised its Standard Operating Procedures 2, addressing among other things, the new Precedential Opinion Panel and the processes the panel will follow during any review. The newly created panel recently accepted its first case where it will consider issues of party and subject matter joinder as part of a larger review of patentability of patents directed to fracking technology. Proppant Express Investments v. Oren Technologies, IPR2018-00914, Paper 24 (PTAB Dec. 3, 2018). This blog post will provide an overview of the Precedential Opinion Panel and the issues it will address in its first review.

USPTO Standard Operating Procedures 2, “sets forth the composition of the Precedential Opinion Panel, describes the mechanisms for invoking Precedential Opinion Panel review of a Board decision recently issued in a pending case, and explains the Precedential Opinion Panel review process.” The panel will typically consist of the USPTO Director, the USPTO Commissioner for Patents, and the Chief Judge of the Patent Trial and Appeal Board (PTAB). The resulting decisions will be precedential and have binding authority.

Under USPTO procedures, there are three ways to obtain a rehearing from the Precedential Opinion Panel:

• “The Director may convene a Precedential Opinion Panel to review a decision in a case and determine whether to order sua sponte rehearing, in his or her sole discretion.”
• “Any party to a proceeding may recommend Precedential Opinion Panel review of a particular Board decision in that proceeding.”
• “[T]he Commissioner for Patents and the Chief Judge, [and] any other member of the Board may recommend Precedential Opinion Panel review of a particular Board decision.”

In all instances in which Precedential Opinion Panel review is ordered, the Precedential Opinion Panel will enter a public order. The order will “identify the issues the Precedential Opinion Panel intends to resolve and the composition of the panel. The Precedential Opinion Panel may request additional briefing on identified issues, and, in appropriate circumstances, may further authorize the filing of amicus briefs. The Precedential Opinion Panel may order, at its discretion, an oral hearing. Once the case has been assigned to the Precedential Opinion Panel, the Precedential Opinion Panel will render a decision in the case resolving the identified issues.” Importantly, there is “no right to further review of a recommendation for Precedential Opinion Panel Review that is not granted.”

In Proppant Express Investments, the Precedential Opinion Panel agreed to review Proppant Express Investments LLC’s request for rehearing after the PTAB found the company could not add new issues to a challenge it previously brought against an Oren Technologies LLC patent. The Precedential Opinion Panel has been assembled to resolve a Board-level “conflict on the proper interpretation of 35 U.S.C. § 315(c).” The review will specifically address the following questions:

1. Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
2. Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
3. Does the existence of a time bar under 35 U.S.C. § 315(b), or any other relevant facts, have any impact on the first two questions?

The patent owner, petitioner, and amicus curiae are authorized to submit briefings, limited to the issues, by December 28, 2018. The patent owner and petitioner may file responsive briefings due on January 14, 2019.

Gibbons will continue to monitor this case, the Precedential Opinion Panel, and changes to the America Invents Act (AIA) trial proceedings and provide periodic updates when applicable.