New PTAB Precedent: Issue Joinder is Discretionary

Issue Joinder Debate Comes Full Circle

As previously discussed, the Patent Trial & Appeal Board’s (PTAB) new Precedential Opinion Panel (POP) has considered its first case in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)

The POP reversed the earlier (divided) panel decision in Proppant Express (which conflicted with the earlier consensus of Target Corp. v. Destination Maternity), holding that 35 U.S.C. § 315(c) permits issue joinder. More specifically, the POP held that 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding (here).

That is, we are right back where we started in Target.

The POP explained that the statute’s use of “any person” that is not the patent owner, could not be used to define “party” to exclude an existing party. As such, the Board reasoned it had discretion to join any party.

As to factors considered in exercising discretion, the POP noted that the time bar under 35 U.S.C. § 315(b) is one of several factors that may be considered when exercising discretion under § 315(c). In order to balance various considerations, including those raised by other statutes such as the time bar of § 315(b), the Board indicated it will exercise discretion only in limited circumstances—namely, where fairness requires it and to avoid undue prejudice to a party.

As to examples of such situations, the POP explained:

" [T]he Board will exercise this discretion only in limited circumstances—namely, where fairness requires it and to avoid undue prejudice to a party. Circumstances leading to this narrow exercise of our discretion may include, for example, actions taken by a patent owner in a co-pending litigation such as the late addition of newly asserted claims. On the other hand, the Board does not generally expect fairness and prejudice concerns to be implicated by, for example, the mistakes or omissions of a petitioner.

So, there you have it. Issue joinder, while now officially deemed permissible under 315(c), should be relatively limited in application to the case of the amended complaint scenario discussed above. It is not a tool to secure a “do-over.”  As the underlying motion in Proppant was seeking to target a claim denied in the first petition, it was denied.

Scott A. McKeown is an author of the Patents Post Grant