On March 7, 2016, the Federal Circuit issued a temporary stay to permit briefing by the parties on the question of whether the PTAB properly ruled that Apple could use the joinder process in Mangrove Capital’s IPR against VirnetX to avoid the one-year bar that prevents a litigation defendant like Apple from filing its own IPR. See “High Stakes Race Between Apple & VirnetX: Will PTAB Trump The Texas Jury’s Award of $625M?”
The order requires Apple and VirnetX to file briefs by March 14 and 17, respectively. The grant of the temporary stay does not mean that the Federal Circuit will find that the joinder decision by the PTAB was improper, but the stay provides a temporary halt to the IPR proceedings in order to permit the appeals court to rule on whether or not the joinder decision allowing Apple to enter the IPR proceedings was proper or not.
VirnetX filed a Petition For a Writ of Mandamus on March 4th (laying out an extensive argument against the PTAB’s decision to allow Apple’s joinder in the IPRs), which led to the above temporary stay and briefing order from the Federal Circuit. It is likely that the Federal Circuit will very promptly issue a decision, given that the AIA provides a statutory requirement for the PTAB to complete IPRs within a maximum of 18 months from institution date. The PTAB has allowed joinder by parties in other situations similar to Apple’s, where the particular party would otherwise have been time barred as a result of litigation. This will be the first time for the Federal Circuit to address the question of joinder in an IPR. Stay tuned for further developments.