Last March I wrote about the PTAB's Precedential Opinion
Panel (POP) taking up its first case in Proppant Express Invs.,
LLC et al. v. Oren Tech., LLC (
article here). In that case, the POP concluded that, where
fairness requires it, 35 U.S.C. § 315(c) allows a petitioner
to file an otherwise time-barred IPR petition and join that
petition to its previously-instituted IPR to request joinder and
consideration of new issues ("issue joinder"). Although
this tool was rarely used, issue joinder allowed an IPR petitioner
to attempt to add new claims/grounds to a previously instituted IPR
if, for example, those claims were asserted by the patent owner
after petitioners' one-year-filing window. Just over a year
later, the Fed. Cir. has reversed this POP decision.
