2019 saw numerous cases before the PTAB and CAFC related to § 315(b) time bar issues. In Ventex v. Columbia Sportswear, the PTAB found that Ventex's petition was time barred because an unnamed real-party-in-interest (RPI) had been served with a complaint ( IP Update Vol. 22, No. 3). Ventex was the supplier of fabrics to Seirus, who had been sued by Columbia more than one year before Ventex's petition. The parties had done business together since 2013, and under an exclusive supply agreement since 2016. The agreement also required Ventex to indemnify Seirus. The PTAB found that Seirus was a clear beneficiary of Ventex's IPR because the Ventex-supplied fabric was the very reason Seirus's products had been accused of infringement. Combined with the parties' long-standing and exclusive relationship, this meant that the parties shared a mutual interest in the outcome of the IPR. The PTAB determined that structured, pre-existing, contractual and well-established business dealings between entities can create an RPI relationship and made the unnamed party a privy of the petitioner.

In the same vein, the CAFC found in Power Integrations v. Semiconductor Components that consideration of all possible RPIs and privies occurs at the time of institution ( IP Update Vol. 22, No. 7). The Court found the time bar was triggered by a merger involving a petitioner that was completed after the petition was filed, but before institution. The Court provided no guidance on whether waiting until after institution to complete a merger would save an otherwise time-barred RPI. One week later, the CAFC held in Mayne Pharma v. Merck Sharp that the PTAB is permitted to excuse an IPR petitioner's late identification of additional RPIs. Initially, the PTAB did not believe that Merck Sharp's parent company was a RPI, but after institution, and on a more fully developed record, the PTAB changed its position. It then permitted Merck Sharp to amend its list of RPIs to add its parent—more than one year after Mayne's complaint was filed. Deferring to the PTAB's interpretation of its rules, the Federal Circuit found no reversible error in the PTAB's reliance on the "interests of justice" language in § 42.5(c)(3) for excusing the late action.

In a precedential decision on joinder, the Precedential Opinion Panel (POP) of the PTAB determined in Proppant Express Investments, LLC v. Oren Techs. that a party may use joinder under § 315(c) to add new issues to its own petitions ( IP Update Vol. 22, No. 4). After institution, Proppant filed a second petition to add a new reference to correct "mistakes" in the prior petition. Because the second petition otherwise would have been time-barred, Proppant filed a motion under § 315(c) for joinder with its first petition. The POP determined that § 315(c) allows for a petitioner to join a proceeding in which it is already a party and provides discretion for the PTAB to allow joinder of new issues into an existing proceeding. The POP concluded that the time bar under § 315(b) is one factor for the PTAB to consider when exercising its discretion, but that it should only do so in limited circumstances—namely, where fairness requires it and to avoid undue prejudice to a party. Mistakes or omissions by a petitioner generally do not qualify.

Finally, the POP of the PTAB found in GoPro, Inc. v. 360Heros ( IP Update Vol. 22, No. 9) that the one year time bar under § 315(b) is triggered even if the complaint served is deficient. Relying on the CAFC's 2018 decision in Click-to-Call v. Ingenio ( IP Update Vol. 21, No. 9), the POP found that the words "served with a complaint alleging infringement" in § 315(b) are plain and unambiguous. The PTAB again confirmed this principle in Sling TV v. Realtime Adaptive Streaming by finding that even a suit brought by a non-patent owner starts the one year clock. Some practitioners have noted that § 315(b)—as currently written and judicially interpreted—opens the door to bad-faith actors to file deficient complaints in an effort to frustrate a petitioner's ability to file an IPR. However, the PTAB in GoPro, Inc. v. 360Heros noted that if it were to encounter such a bad-faith filing in the future, it may revisit the question of the availability of an equitable tolling of the application of the time bar.

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