Insights: Alerts The Federal Circuit Expresses Concern about IPR Joinder and Expanded Panels
The Federal Circuit affirmed the Board's determination that under the first ground, the challenged patent was obvious, and thus, the court did not need to address the procedural challenges to the Board's decision. Id. at 6. Judges Dyk and Wallach joined the decision. Id. at 13-14. However, they noted in their concurrence that they “have serious questions as to the Board’s (and the Director’s) interpretation of the relevant statutes and current practices.” Id at 14. They first noted that the exception to the time bar was designed to allow party joinder when such joinder “would not introduce any new patentability issues” and allowing petitioners to circumvent the time bar by adding new issues was contrary to Congressional intent. Id. at 15. They also expressed concern with the Board’s practice of expanding panels in response to a panel’s decision with which the PTO is dissatisfied. Id. at 16. The decision suggests that petitioners should exercise caution when pursuing additional issues of patentability in joinder that are not already a part of the instituted trial.
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