In the first case to be taken up by the PTAB's Precedential
Opinion Panel (POP), Director Iancu, Commissioner Hirshfeld, and
then Acting Chief Judge Boalick (now appointed) have determined
that, under appropriate and limited circumstances, a petitioner may
join its own previously-instituted IPR to request joinder and
institution of new issues.
In Proppant Express Invs., LLC et al. v. Oren Tech.,
LLC, petitioners filed an otherwise time-barred IPR petition
and motion for joinder in an effort to join their original,
partially-instituted IPR to correct an error in their analysis for
claim 4. This motion was denied because the original panel
concluded that "35 U.S.C. § 315(c) [provides] authority
to join only other parties to existing proceedings without
introducing new issues of patentability," and petitioners'
request ran contrary to both requirements. Petitioners requested
rehearing, which was granted and submitted to the POP for
consideration of the following
