Elong Int’l USA Inc. v. Feit Electric Co., Inc.

When a petitioner files a copycat petition together with a motion for joinder to an already-instituted IPR, the Director must first decide institution, because 35 U.S.C. § 315(c) has the Board determine institution before it considers joinder. Discretionary considerations under § 314(a) are reviewed first for the petition on its own, as if joinder were not sought, and then as if joinder were granted. If both reviews favor denial, as they did here, institution is denied and the joinder motion is not reached. No prior precedent directly addressed this issue, according to the text, which cites no earlier Board decision on the two-step review. A joinder petitioner can no longer rely on piggybacking on an instituted IPR. The petition must survive discretionary review standing alone, including the parallel-litigation timing, and also survive the as-if-joined review. Patent owners gain a clear framework for opposing copycat petitions: they can show that the final written decision would come after the district court trial both with and without joinder, and that the Office might be left maintaining a proceeding if the original petitioner drops out. The decision cites 35 U.S.C. §§ 314(a) and 315(c) and no Federal Circuit or Supreme Court authority. LEGAL TEST OR STANDARD: The Board first decides whether to institute before considering joinder, citing 35 U.S.C. § 315(c). It therefore reviews discretionary considerations for the Petition on its own, and then reviews them as if joinder were granted. Factors the Board weighed: whether a final written decision is likely to issue before the district court trial, investment by the parties in the district court proceeding, likelihood of a district court stay, the burden of maintaining the proceeding if the original petitioner exits, and any other benefits outweighing the discretionary considerations. The determination is a holistic assessment under 35 U.S.C. § 314(a). TRIGGERING FACTS: Petitioners filed a petition identical to the one in IPR2024-01357 and a motion for joinder to that proceeding, which was instituted March 5, 2025. The projected final written decision date was July 24, 2026 for this case and March 5, 2026 for the joined case. The district court trial was set for January 20, 2026. A Markman hearing was scheduled for May 15, 2025, fact discovery was to close soon, and there was insufficient evidence that the district court would stay. Petitioners stipulated not to assert invalidity positions based on the same prior art in district court, and argued no added burden on the Board. KEY QUOTE: "Accordingly, discretionary considerations are first reviewed for the Petition on its own, and then reviewed if joinder were to be granted." (Paper 16, p. 2) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision cites only Savant Techs. v. Feit Elec. Co., Inc., IPR2024-01357, Paper 17 at 32 (PTAB Mar. 5, 2025), the instituted proceeding Petitioners sought to join. PRACTICE TIP: Before filing a copycat petition with a joinder motion, assess whether the petition would survive discretionary review on its own, especially the trial date versus the projected final written decision date. Do not rely on the joinder posture or a same-art stipulation, because both were found insufficient here. Patent owners should address both the standalone and the as-if-joined scenarios in the discretionary denial request.