bookoff-mcandrewsgoogleplus--whitelinkedin--whitenoun_Conversation_1010437vcard

In a March 7, 2016, Order, the Court of Appeals for the Federal Circuit directed the Patent Trial and Appeal Board (PTAB) to temporarily stay a pair of inter partes review (IPR) proceedings. In re: Virnetx Inc., No. 2016-119 (March 7, 2016). The court did so to allow time for it to consider whether the PTAB impermissibly joined a petition filed by a time-barred entity to an existing (i.e., instituted) IPR proceeding. More specifically, the court was asked to determine whether 35 U.S.C. § 315 permits a time-barred petitioner to request joinder where its petition was filed after the one-year deadline specified in Section 315(b). Section 315(b) states that “[a]n inter partes review may not be instituted if the petition  . . . is filed more than 1 year after  . . . the petitioner is served with a complaint alleging infringement of the patent.” Section 315(b) also states that this time limitation “shall not apply to a request for joinder.” In its petition for a Writ of Mandamus, the patent owner argued that the PTAB interpreted Section 315(b) to mean that, “if a party filing a time-barred petition requests joinder, the one-year time bar ‘shall not apply.’” In response to the petition for the Writ, the court ordered the parties and the Director of the USPTO to submit additional briefing, and, for the first time ever, ordered the PTAB to temporarily stay the IPR proceedings, pending the court’s decision on the issues.