PTAB Nixes IPR Revival

by | Jul 10, 2024 | Joinder, PTAB News, PTAB Trial Basics, Time Limits, Trial Institution

By Ariana Tsanas*, Matt Johnson, and Daniel Sloan –

On May 6th, 2024, the PTAB declined Ubiquiti Inc.’s (“Petitioner’s”) request to institute inter partes review.  Ubiquiti Inc. v. XR Communications LLC D/B/A Vivato Tech., IPR2024-00148, Paper 12 (May 6, 2024).  The PTAB simultaneously denied Petitioner’s Motion for Leave to File Motion to Reopen inter partes review, Petitioner’s Motion to Waive the Time Limit for Filing a Motion for Joinder, and Petitioner’s Motion for Joinder.

In 2021, XR Communications LLC (“Patent Owner”) filed a series of complaints alleging infringement of U.S. Patent No. 10,594,376 (“the ’376 patent).  The ’376 patent is related to directed wireless communication.  Patent Owner named Petitioner and several other parties as Defendants.  Defendants other than Petitioner requested inter partes review of the ’376 patent and the PTAB instituted trial in October 2022.  The parties settled and the IPR terminated in October 2023.  In November 2023, Petitioner filed a Motion for Leave to File a Motion to Reopen the first inter partes review concurrently with its own IPR petition, a Motion to join the first IPR, and a motion to Waive the Time Limit for Filing a Motion for Joinder.  Petitioner’s request for Joinder and its own request for IPR were outside the statutory deadlines (one month after institution and one-year after being served with a complaint respectively).

The AIA and PTAB rules, however, permit the PTAB to allow a party to join an inter partes review outside of the one-year time bar if it is accompanied by a request for joinder.  Petitioner argued that further review of the ’376 patent was in the public interest.  Patent Owner countered that the IPR was properly terminated and should not be reopened, asserting that the request for a time waiver was frivolous.  The PTAB agreed with Patent Owner as to termination but declined Patent Owner’s request for sanctions.

The PTAB converted Petitioner’s Motion for Leave to file a Motion to Reopen into a Motion to Reopen and denied it on the merits, concluding the first IPR was properly terminated.  The PTAB noted that Petitioner failed to cite any authority granting it the power to reopen the IPR.  Moreover, Petitioner’s lack of action within the timeframes provided by statute and regulation weighed heavily against any interest of justice in reopening the first IPR.  The PTAB also denied Petitioner’s Motion for Joinder because, after denying the motion to reopen, there was no proceeding to join.  Accordingly, the PTAB dismissed Petitioner’s Motion to Waive the Time Limit for Filing a Motion for Joinder as moot.  Without a proceeding to join, the Joinder exception to the time bar could not apply.  Thus, Petitioner’s own request for IPR was time-barred as well outside of the one-year limit.

Takeaway:

Patent challengers should seek joinder only when there is a case to join, or they can present strong arguments for reopening inter partes review.  Extraordinary requests that do not have statutory or regulatory authority in support are unlikely to be granted.

* Ariana is a summer associate in Jones Day’s New York Office.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.
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