Joinder Estoppel Revisited

A few weeks back, the federal Circuit handed down a decision in Uniloc 2017 LLC v. Facebook Inc, capping off a complicated procedural history.  In its decision, the Court sorted out the estoppel impact of IPRs finishing a few months earlier than others, and what that meant for parties common to these IPRs.

Left unanalyzed, however, was whether or not the PTAB’s initial finding of estoppel was appropriate in the first instance given the peculiar manner by which parties are joined to PTAB proceedings via copy-cat petitions.

First, the competing IPR proceedings and the parties (decision here).

Back in May 2017, Facebook filed an IPR petition against a Uniloc patent.  A month later, they joined Apple’s instituted IPR on the same patent. Apple’s IPR was based on different prior art grounds than Facebook’s own petitions.

Separately, LG petitioned and was allowed to join Facebook’s IPRs once instituted. In May 2018, the PTAB issued a Final Written Decision on the Apple IPR, then dismissed-in-part Facebook from its own IPRs as to all claims litigated in the Apple IPR due to 315(e)(1) estoppel. Facebook was permitted to remain active in its IPRs for the one claim not challenged in the Apple IPR, with LG assuming the role of the challenger for the common claims from which Facebook was estopped.  Got all that?

The Federal Circuit’s considered whether LG should also have been estopped as Facebook’s privy or real party in interest under 315(e)(1). But notably missing from the analysis was whether the PTAB was wrong to hold Facebook estopped in the first place.

Looking to last year’s Federal Circuit decision in Network-1 Technologies, Inc. v. Hewlett-Packard Co. would seem to make this question a no-brainer. Network-1 explains that joinder estoppel is limited compared to original petition estoppel. 315(e)(1) estoppel only bars claims that a party “raised or reasonably could have raised” in an earlier proceeding.  Since a joining party can’t raise additional grounds other that those already instituted, that party is not statutorily estopped from raising those other invalidity grounds in a different IPR.  In joining the Apple petition, Facebook had no opportunity to raise anything but what Apple raised in a copy-cat petition.

On the other hand, this scenario could be distinguishable from Network-1 in that Facebook had filed an additional IPR where it in fact did raise additional grounds.  But, that potential explanation is absent from the court’s decision as this issue seemingly was left unchallenged.

Although predating, Network-1, the PTAB seemed to align itself with the missing rationale noted above. That is, the Board explained that Facebook chose to join the Apple IPR when it did not have to, despite knowing the limited scope of that case and having already known of its own additional grounds. The Board also pointed out that Facebook could have requested to consolidate a new petition with additional challenges with its earlier case, instead of joining the Apple IPR.  Indeed, recent PTAB rule changes mandate that the Board be notified of such competing final written decision dates.

As pointed out previously, the estoppel restriction of Network-1 may encourage petitioners to join existing filings where previously they might have preferred their own, separate filing.