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2019 Pat. App. LEXIS 1118

Patent Trial and Appeal Board Representative Orders, Decisions and Notices

               March 13, 2019, Decided

Case IPR2018-00914, Paper 38; Patent 9,511,929 B2

USPTO Bd of Patent Appeals & Interferences; Patent Trial & Appeal Bd Decs.

Opinion

                  BOALICK, Acting Chief Administrative Patent Judge.

                  DECISION

                  Granting Petitioner's Request for Rehearing

                                                               37 C.F.R. § 42.71(d)                                                      

                  Denying Petitioner's Motion [*2]  for Joinder

                                                                  35 U.S.C. § 315                                             (c)                                 

                  Denying Institution of Inter Partes  Review

                                                                  35 U.S.C. § 315                                             (b)                                 

                  I. INTRODUCTION

                  Proppant Express Investments, LLC and Proppant Express Solutions, LLC (collectively, "Petitioner") filed a Petition (Paper 1, "Pet.") requesting an inter partes  review of claim 4 of U.S. Patent No. 9,511,929 B2 (Ex. 1004, "the '929 patent"). Oren Technologies, LLC ("Patent Owner") filed a Preliminary Response (Paper 11) to the Petition. Petitioner also filed a Motion for Joinder (Paper 3, "Mot.") requesting that it be joined to a pending proceeding, IPR2017-02103 ("the 2103 IPR"). Patent Owner filed an Opposition to the Motion for Joinder (Paper 7), and Petitioner filed a Reply in Support of the Motion for Joinder (Paper 8).

                  In the 2103 IPR, Petitioner requested an inter partes  review of claims 1-7, 10, and 12-19 of the '929 patent. Mot. 1. Patent Owner filed a Preliminary Patent Owner Response which, among other things, pointed out that Petitioner had failed to account for all of the limitations of [*3]  claim 4 under the ground asserted against claim 4. Id. at 3. Although the Board instituted an inter partes  review, it did not institute on the ground challenging claim 4 for this reason. Id. Thereafter, Petitioner filed the Petition and Motion for Joinder in this case to correct the error for claim 4. Id. at 4. The Board denied the Petition and Motion for Joinder. Paper 21, 2. The Board interpreted 35 U.S.C. § 315(c) as providing authority to join only "other parties to existing proceedings without introducing new issues of patentability." Id. at 4. Thus, the Board denied the Motion for Joinder because Petitioner is already a party to the 2103 IPR and sought to introduce new issues to the 2103 IPR. Id. at 6. The Board denied the Petition under 35 U.S.C. § 315(b) because Petitioner had been served with a complaint alleging infringement of the '929 patent more than one year before the date on which the Petition in this proceeding was filed. Id.                                 

                  Petitioner requested rehearing of the Board's decision. Paper 22, 1-2. Because Board decisions conflict on the proper interpretation of [*4]  § 315(c), the Precedential Opinion Panel ("POP") ordered a review on rehearing to address the following issues:

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2019 Pat. App. LEXIS 1118 *

PROPPANT EXPRESS INVESTMENTS, LLC, and PROPPANT EXPRESS SOLUTIONS, LLC,; Petitioner,; v.; OREN TECHNOLOGIES, LLC,; Patent Owner.

Notice:

             [*1]             

               PRECEDENTIAL OPINION. Pursuant to the Board of Patent Appeals and Interferences Standard Operating Procedure 2, the opinion below has been designated a precedential opinion.

         

CORE TERMS

joinder, patent, join, inter partes, new issue, time limit, sentence, amicus, amici, consolidate, pop, limited circumstances, legislative history, reasonable likelihood, infringement, time-barred, discretion to grant, statutory language, undue prejudice, superfluous