Agency Discretion May Permit Joinder of New Party Claims

Issue joinder practice at the Patent Trial & Appeal Board (PTAB) has had a storied history to date. As a reminder, the debate at the agency (spawning the now infamous “panel stacking” decisions) has been the proper scope of “joinder” under 35 U.S.C. § 315(c). That is, “can an existing petitioner (party) properly “join” its own proceeding to add a new issue to that proceeding, or is this statute limited to more traditional notions of party joinder?”

From the agency’s perspective, this issue was finally settled by the Precedentiial Opinion Panel (POP) decision in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38) In this decision, the POP held that 35 U.S.C. § 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).

Since Proppant, the Federal Circuit has had an opportunity to consider PTAB issue joinder practices in Facebook, Inc. v. Windy City Innovations, LLC. , and judging by the oral argument, is not in favor of endorsing this practice. But, the USPTO has indicated in a brief (amicus brief) submitted post Facebook oral argument, that regardless of the outcome in Facebook that issue joinder practice may live on.

In its brief (here) the Solicitor first focuses on the main issue from the agency’s perspective — the amount of deference that should be accorded a decision of the POP, such as Proppant. This briefing (in my view) effectively highlights the patent exceptionalism of previous decisions on the scope of such deference, such as aspects of the the en banc opinion in In re Aqua Products.

More interestingly for PTAB practitioners, however, is the discussion on the policy rationale behind Proppant, and possible alternative paths to adding issues outside of the one year bar. The briefing explains that Proppant reaffirmed that while a petitioner must present all of its challenges within the one-year time bar, there are circumstances in which it is appropriate to permit a petitioner to assert new claims in a follow-on petition, such as when a patent owner in a co-pending litigation has made a late addition of newly asserted claims. In footnote (5) of its brief, the agency suggests that “the agency has not yet determined” whether such gamesmanship could be reached through 35 U.S.C § 316(a)(3) (authority for establishing procedures for the submission of supplemental information after a petition has been filed).

The procedures to permit such may already exist as 37 C.F.R. § 42.123. In particular, 42.123(c) provides a catch-all provision:

" (c) Other supplemental information. A party seeking to submit supplemental information not relevant to a claim for which the trial has been instituted must request authorization to file a motion to submit the information. The motion must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.

(emphasis added)

In a scenario where a claim is added by a Patent Owner after a petitioner’s one year window is closed, it could be argued that 41.123(c) would provide for that claim to be added to the trial in the interests-of-justice. Of course, it is likely that the claim would need to be close in scope (and applied art) to be administratively efficient. Nevertheless, there is now an agency endorsed toe-hold to advance that argument.

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