Yes. It is true that you cannot ordinarily file an IPR petition more than one year after service of a complaint alleging infringement. However, an IPR petitioner may, by request, and at the PTAB's discretion, join another party's prior filed IPR. If the petitioner's challenge is substantially the same as that in the earlier IPR, it weighs in favor of joinder. Parties often copy the petitions from prior filed IPRs in order to facilitate joinder.
Is the joining party allowed to withhold pertinent prior art references, wait to see the patentee's and PTAB's reaction to the first filed IPR, only to file a second IPR in the event it is unfavorable?
In one case (International Business Machines Corp. v. Zitovault, LLC, IPR2016-01851 (P.T.A.B. Mar. 20, 2017) (Paper 7)), the answer was a resounding "no." Scott Forman at Wolf Greenfield has posted an excellent article on this very topic:
http://blog.wolfgreenfield.com/postgrant/ptab-to-petitioners-dont-hold-back#page=1
Is the joining party allowed to withhold pertinent prior art references, wait to see the patentee's and PTAB's reaction to the first filed IPR, only to file a second IPR in the event it is unfavorable?
In one case (International Business Machines Corp. v. Zitovault, LLC, IPR2016-01851 (P.T.A.B. Mar. 20, 2017) (Paper 7)), the answer was a resounding "no." Scott Forman at Wolf Greenfield has posted an excellent article on this very topic:
http://blog.wolfgreenfield.com/postgrant/ptab-to-petitioners-dont-hold-back#page=1
RSS Feed
