In 2985 LLC d/b/a Mountain Voyage Company, LLC v. The Ridge Wallet LLC, a Patent Trial and Appeal Board (“PTAB”) panel denied inter partes review (“IPR”) institution where the petition was time barred under 35 U.S.C. § 315(b) (“§ 315(b)”). IPR2024-001264, Paper 15 at 8 (PTAB Feb. 18, 2025). This denial occurred because Petitioner failed to bring the petition requesting institution within one year after the date on which the petitioner, real party in interest, or privy of the petitioner was served with a complaint alleging infringement. Id.; see also 35 U.S.C. § 315(b).
On March 15, 2023, Petitioner was served with a complaint alleging infringement in the United States District Court of Colorado. Id. In response, on August 6, 2024, Petitioner filed a petition to institute IPR of claims 1-24 of U.S. Patent No. 10,791,808 B2 (“the ’808 patent”). Id. at 2. The patent at issue was to a compact wallet, which was not substantially larger than a credit card and maximized expandability of the wallet to accommodate multiple objects of substantially the same size. Id. at 4. Petitioner also filed a Motion for Joinder requesting that it be joined as a party to Shenzhen Pincan Technology Co., Ltd, v. The Ridge Wallet, LLC, IPR2024-00340 (PTAB July 12, 2024) (“the Shenzhen IPR”), which involved the same claims of the ’808 patent, and for which an IPR was instituted on July 12, 2024. Id. at 2. Petitioner argued that the Motion for Joinder and the accompanying petition were timely filed within one month of the decision to institute trial in the Shenzhen IPR. However, the Shenzhen IPR was subsequently terminated on December 29, 2024 because the parties involved settled. Id.
On September 6, 2024, the Petitioner filed a paper titled “Petitioner’s Notice of Ranking Petitions” in the instant IPR. Id. Petitioner had two other IPR’s already instituted regarding the ’808 patent. Id. Patent Owner, on November 29, 2024, filed a Preliminary Response and an Opposition to the Motion for Joinder. On February 18, 2025, the PTAB denied the Petitioner’s Motion for Joinder as moot and ordered that the petition be denied. Id. at 9. The PTAB relied on § 315(b), which states that “an inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b).
The PTAB held that there was no dispute that Patent Owner served Petitioner with a complaint alleging infringement on March 15, 2023. Id. at 8. There was also no dispute that the petition in question was filed more than one year after receiving the complaint—August 6, 2024. Id. Petitioner argued that its request to join the Shenzhen IPR would allow it to avoid the time bar under § 315(b). Id. The PTAB, however, stated that the Shenzhen IPR had been terminated, and thus, there was no longer a pending proceeding in the Shenzhen IPR for Petitioner to join. Id. Accordingly, the PTAB held that the request to join the Shenzhen IPR was moot, and the petition was not timely under § 315(b). Id.
Takeaway: Petitioners should carefully evaluate the time periods in which they can bring an IPR petition. Failure to bring a petition within the one year time period under § 315(b) can lead to the PTAB denying institution. Further, if petitioners wish to rely on a motion for joinder in order to bring a petition outside of this one year window, they need to be sure that the IPR they are relying on will not be terminated.
