On January 18, 2024, the Federal Circuit Court of Appeals held that a party joining an already-instituted IPR is not limited to the claims and grounds challenged in the IPR where the patent owner has introduced new claims. Cywee Group Ltd., v. ZTE (USA), Inc., LG Elecs. Inc., Case No. 21-1855 (Fed. Cir. Jan. 18, 2024).
The appeal arose from IPR 2019-00143, originally brought by petitioner ZTE (USA), Inc. (“ZTE”), and later joined by LG Electronics, Inc. (“LG”). After institution, Patent Owner CyWee Ground Ltd. (“CyWee”) moved to amend certain claims, and ZTE opposed. The Board’s preliminary guidance sided with ZTE. CyWee filed a revised motion to amend the same claims. ZTE did not oppose. LG, arguing that ZTE was no longer actively participating in the IPR, moved for leave to oppose CyWee’s revised motion to amend. The Board ultimately permitted LG to oppose. LG’s opposition relied on a prior art reference that ZTE did not previously raise. The Board denied CyWee’s revised motion to amend and found the challenged original claims unpatentable. CyWee, Case 21-1855 at 3-5.
On appeal, CyWee argued that 35 U.S.C § 315(c) “does not authorize the joined party to bring new issues . . . into the existing proceeding.” CyWee, Case 21-1855 at 8 (citing Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020)). Section 315(c) provides:
If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.
35 U.S.C § 315(c).
The Federal Circuit Court of Appeals found that section 315(c) does not apply to a motion to amend:
The principle that the IPR statutory provisions permit consideration of only the grounds in the petition does “not apply in the context of motions to amend where the patent owner has introduced new claims into the proceedings.” We therefore fail to see why the § 315(c)-based limitation we articulated in Facebook is relevant to this issue.
CyWee, Case 21-1855 at 8-9 (quoting Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir. 2020)).