On March 13, 2019, the Patent Trial and Appeal Board issued a precedential decision in Proppant Express Investments LLC v. Oren Technologies LLC, holding that 35 U.S.C. § 315(c) does not provide per se prohibitions against same-party joinder and joinder of new issues, but instead “provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding.”
The USPTO has received considerable criticism over the years because it was historically difficult to amend claims in an IPR proceeding. In response to that criticism, the Patent Office started a Pilot Program that will give a patent owner two chances to amend its claims. The Pilot Program began on March 14, 2019, and applies to every IPR proceeding instituted on or after that date. Petitioners should now carefully consider the impact of this “second chance at life” provided by the Pilot Program.
The Patent Trial and Appeal Board (PTAB) today designated three decisions precedential: K-40 Electronics, LLC v. Escort, Inc.,DePuy Synthes Products, Inc. v. MEDIDEA, LLC, and Amazon.com, Inc. v. Uniloc Luxembourg S.A..