Patent Lawyer Blog
In a recent decision highlighting the intersection of settlements and joinder in patent challenges, the Patent Trial and Appeal Board (PTAB) has denied Mountain Voyage’s attempt to join a terminated inter partes review (IPR) proceeding involving The Ridge Wallet’s compact wallet patent.
The February 18, 2025 decision in IPR2024-01264 demonstrates how settlement of an existing IPR can foreclose opportunities for other parties seeking to join, even when their joinder motion is timely filed relative to the institution decision.
Background
Mountain Voyage filed its petition and motion for joinder on August 6, 2024, seeking to join an earlier IPR filed by Shenzhen Pincan Technology (the Shenzhen IPR). While Mountain Voyage filed within one month of the Shenzhen IPR’s institution as required by PTAB rules, the settlement and subsequent termination of the Shenzhen IPR in December 2024 proved fatal to Mountain Voyage’s strategy.
The Timing Trap
“There no longer is a pending proceeding in the Shenzhen IPR for Petitioner to join,” the Board explained, declaring the joinder motion moot. This left Mountain Voyage’s petition subject to the standard one-year time bar under 35 U.S.C. § 315(b), which had already expired.
Key Takeaways:
- Settlement’s Broad Impact: The termination of an IPR through settlement affects not just the settling parties but can also eliminate joinder opportunities for other potential challengers
- No Protected Window: Even a timely filed joinder motion within the one-month window after institution provides no guarantees if the underlying IPR is terminated before the motion is granted
- Time Bar Risks: Relying on joinder to overcome a time bar is risky, as the termination of the target IPR leaves the petition subject to the original statutory deadline
The Impact
The case serves as a warning to practitioners about the risks of relying on joinder motions, particularly when facing time bar issues. Mountain Voyage’s petition was ultimately denied as time-barred, with the Board noting that the termination of the Shenzhen IPR left no pending proceeding to join.
Looking Forward
This decision underscores the complex interplay between settlements and joinder in patent challenges. Practitioners should carefully consider these strategic implications when planning IPR challenges or considering settlements of instituted IPRs that might affect joinder requests.
For companies in Mountain Voyage’s position, the decision highlights the importance of taking action within the original one-year statutory period rather than relying on joinder opportunities that might evaporate through circumstances beyond their control.
Administrative Patent Judge Matthew S. Meyers authored the decision, joined by Judges William V. Saindon and Jason W. Melvin. Mountain Voyage Co. v. The Ridge Wallet, LLC, Case No. IPR2024-01264, Paper 15 (PTAB Feb. 18, 2025).
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.