New De Facto Precedent on Question of Issue Joinder

In Target Corp. v. Destination Maternity Corp (IPR2014-00508), the Board departed from previous PTAB practice on issue joinder for the first time. That is, up until Target, a same petitioner was able to join a first-filed petition with a later filed, second petition (i.e., "issue joinder). The first Target decision determined that issue joinder was outside of the statutory authority granted by 35 U.S.C. § 315(c). cf. Microsoft Corp. v. Proxyconn, Inc., (IPR2013-00109, Feb. 25, 2013). Thereafter, an expanded, but divided, panel, reversed, that finding on rehearing. Since that time, as the ultimate decision in Target  was not precedential, the question of whether or not issue joinder is permitted by statute has become panel dependent.

Now, based upon a recent decision of the Board (which tracks a recent brief filed by the USPTO with the CAFC), it appears the Board is moving toward a more consistent policy of accepting issue joinder. 

In IPR2015-00762 Zhongshan Broad Ocean Motor Co., et al., v. Nidec Motor Corp., as in Target, the Board first found issue joinder was not supported by 35 U.S.C. § 315(c), then reversed on rehearing. (here

On rehearing, the petitioner emphasized the USPTO's argument filed with the Federal Circuit this past June in the Intervenor Brief of Yissum Research Dev. Corp. v. Sony Corp., Appeal No. 2015-1342.  In that Brief, the Solicitor argued that issue joinder was a matter of discretion, but that the Board had been consistent in permitting issue joinder under the statute.  Brief at pg. 16; and footnote 4 (here) .  The brief distinguished cases where issue joinder was denied as a failure of the petitioner to seek rehearing. In it's request for rehearing, Zhongshan pointed out the Solicitor's argument to the PTAB:

[T]he Patent Office further told the Federal Circuit that by theTarget Decision Granting Petitioner’s Request for Rehearing (by expanded panel), “[t]he USPTO thus has acted to ensure that its pronouncements remain consistent on this issue, which is the antithesis of Yissum’s suggestion that the USPTO ‘can’t make up its mind about the proper interpretation’ of §315(c).” 

                                                                     .                    .                 .                .               .

On June 25, 2015, the Patent Office publicly announced, via the Intervenor's Brief, that §315(c) is to be broadly interpreted as set forth inTarget. Indeed, the Patent Office told the Federal Circuit that it should defer to the Board's broad interpretation of §315(c) set forth in Target, citing Chevron, U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837, 842-43 (1984).

(internal citations omitted)

In reversing the earlier decision, as it also did in Target, the Board concluded:

Upon consideration of the arguments asserted by Petitioner and Patent Owner, and for the reasons explained by several majority opinions in prior decisions of the Board, we conclude that § 315(c) permits the joinder of any person who properly files a petition under § 311, including a petitioner who is already a party to the earlier instituted inter partes review. We also conclude that § 315(c) encompasses both party joinder and issue joinder, and, as such, permits joinder of issues, including new grounds of unpatentability, presented in the petition that accompanies the request for joinder.

Although unstated in the decision, the position taken by the USPTO before the CAFC seems to indicate a, new, de facto precedent finding issue joinder statutory.  Likewise, as explained last week, the USPTO has asked Congress to clarify the joinder statute in this regard as well. Thus, while issue joinder may still be denied as a matter of discretion on a case-by-case basis, for example, where gamesmanship is present, outright denials based upon statutory interpretation would seem foreclosed going forward. 

While reasonable minds may differ on statutory interpretation, consistency is a good thing.