James Hall was recently quoted in an article discussing the potential impacts of the Federal
Circuit's recent decision in Facebook Inc. v. Windy City Innovations LLC. In that decision, the Federal Circuit ruled that petitioners seeking inter partes review before the Patent Trial and Appeal Board cannot join themselves as a party to an existing review, nor can they add new issues when joining petitions filed by other parties. This means that petitioners will not be able use joinder, outside of filing “follow-on” petitions that duplicate another petitioner’s petition, to escape the statutory one-year time bar to file a petition after being sued for patent infringement.
James noted that the decision may encourage patent owners to hide the ball when it comes to identifying which claims of a patent are being asserted: "It may encourage some behavior by patent owners to act in a way that will prevent petitioners from understanding which claims are being asserted, and try to put petitioners in a bind." Petitioners should consider using the decision as part of their arguments to force such identification in district court. James explained that "this decision will give petitioners another arrow in the quiver as far as arguments they might make to a district court to attempt to force patent owners to declare the [asserted] claims."
The article was published by Law360 on March 20, 2020 and may be found at the following link (subscription required): Ban On IPR Time-Bar Tricks Will Spur New Strategies. James has previously been recognized as one of the top IPR attorneys in the nation and is routinely consulted on issues related to AIA trial proceedings.