In Artsana USA, Inc. v. Kolcraft Enterprises, Inc., the PTAB granted the Patent Owner’s request for adverse judgment under 37 C.F.R. § 42.73(b) and found the challenged patent claims to be unpatentable. IPR2014-01053, Paper 24 (April 3, 2015). In so doing, the Board prevented a subsequently-filed petition from being joined to the IPR-at-issue and effectively denied the later petition as time-barred under 35 U.S.C. § 315(b).
37 C.F.R. § 42.73(b) allows a party to “request judgment against itself at any time during a proceeding.” Under 37 C.F.R. § 42.72, the PTAB is authorized to “terminate a trial without rendering a final written decision, where appropriate, including where the trial is consolidated with another proceeding or pursuant to a joint request under 35 U.S.C. 317(a) or 327(a).” The purpose of sections 42.72 and 42.73(b) is “to secure the just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b).
Defendants in district court litigation normally have one year from the date of service of a complaint for patent infringement to file an IPR petition for the asserted patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). However, the one-year filing deadline does not apply if, within one month after the institution date of an IPR for the asserted patent, a defendant files a subsequent IPR petition for the patent with a request to join the already instituted IPR. 37 C.F.R. § 42.122(b).
Exactly one year after the Petitioner in Artsana was served with a complaint alleging infringement of the asserted patent, the Petitioner filed an IPR petition challenging all claims of the patent. The PTAB instituted review, but only for some of the challenged claims. The Petitioner later filed a second IPR petition against the asserted patent. As the subsequent Petition was filed more than one year after the deadline under 35 U.S.C. § 315(b), a request to join the existing IPR was also filed with the second petition.
Several weeks after the second petition was filed, the Patent Owner requested adverse judgment against itself on the instituted claims from the first petition. Petitioner did not oppose the adverse judgment per se, but it sought to delay a ruling on adverse judgment until decisions on institution and joinder were rendered for the second petition. The parties agreed that the second petition would be time-barred under 35 U.S.C. § 315(b) if there was no existing IPR to which the second petition could be joined.
The Board rejected Petitioner’s request to delay the grant of the adverse judgment request, finding that “the Petitioner has not shown that the weight of the factors in this particular case favors the grant of the request to delay the decision.” In support of its ruling, the Board emphasized that one of its roles is “to secure the just, speedy, and inexpensive resolution of each proceeding.”
Some takeaways from this decision include:
- The Board takes the instruction “to secure the just, speedy, and inexpensive resolution of each proceeding” seriously. The Board will dismiss an IPR in order to quickly resolve the proceeding, even if the dismissal means that any pending requests to join the proceeding will be mooted, and a later-filed petition will be time-barred.
- If a defendant in district court litigation wants to preserve more than one opportunity to challenge an asserted patent before the PTAB, they should consider filing their initial IPR petition early enough so that an institution decision will issue before the one-year bar under 35 U.S.C. § 315(b) expires.