Debate Over Issue Joinder Continues

Back in September, the Patent Trial & Appeal Board (PTAB) issued a rare expanded panel Order in Target Corp. v. Destination Maternity Corp., (IPR2014-00508) (here). In the Order, a divided panel denied issue joinder under 35 U.S.C. § 315(c) as a matter of law (i.e., the joining of two petitions of a same petitioning party). The decision was especially surprising given the fact that 315(c) had been previously interpreted by the PTAB as permitting such joinder practices. In fact, one such decision Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 17, Dec. 21, 2012 is published on the PTO web site as a representative order.

Since the decision in Target, rehearing has been requested, and other petitioners have begun to assail the PTAB's perceived change in course on the matter of issue joinderTarget's request for rehearing (here) seeks a further expanded panel (7 or more judges), explaining the decision creates a per se prohibition against issue joinder: 

[T]he Board found that Target's joinder motion could not be granted because the corresponding IPR petition was time-barred under 35 U.S.C. § 315(b) on the theory that § 315(c) permits joinder of parties but not an existing petitioner's new petition filed after § 315(b)'s one-year deadline. (Paper 18, at 3-11.) The Board erred in narrowly interpreting § 315(s) to impose a per se prohibition on a party to an existing IPR proceeding joining to that proceeding a second petition filed by that party along with a timely joinder request.

The rehearing request goes on to emphasize that "any person" of 315(c) includes previous petitioners and that courts interpret the words of a statute in their context and with a view to their place in the overall statutory scheme. Given that the spirit and purpose of the AIA is to improve patent quality and providing a more efficient system for challenging patents, it is argued that a narrow read of 315(c) is an abuse of discretion.

In another ongoing proceeding, Micro Motion Inc. v. Invensys Systems Inc. (IPR2014-01409) (here) joinder is being opposed by the patentee on the basis of the Targetdecision. The petitioner has characterized Target as a "minority outlier decision":

Patent Owner's opposition relies exclusively on Target Corp. v. Destination Maternity Corp., IPR2014-00508 (Paper 18) (Sept. 25, 2014), which is neither "precedential" nor "informative" under the Board's SOP 2, and therefore is not binding. While Patent Owner characterizes Target as an "expanded panel," the two judges that were added to the original panel (consisting originally of Judges Bisk, Fitzpatrick, and Weatherly) appear to have been added precisely because of their known, contrary view on the issue. See Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022 (Sept. 2, 2014) (Paper 166) (Green, J.) (holding that § 315(c) authorizes joinder between the same parties); Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109 (Feb. 25, 2013) (Paper 15) (Giannetti, J.) (same).  . . . .Target is directly contrary to at least five prior decisions, including Microsoft—a decision listing the current Vice Chief as a panelist and which the Board itself published on its webpage of "Representative Orders, Decisions, and Notices” as a “Decision granting motion for joinder.” Indeed, Microsoft specifically noted that “the same patents and parties are involved in both proceedings” and stressed that this was “an important consideration here, because Microsoft was served with a complaint asserting infringement of the ʼ717 patent more than a year before filing the second Petition.” Id. at 4. Petitioner here reasonably relied on Microsoft in its motion.  

(emphasis in original)

As I pointed out previously, non-precedential decisions such as Target (which are directly contrary to other decisions of the Board) foster the perception that panel assignment may be outcome determinative, and that the PTAB is an inconsistent forum. Given the expanded role of the PTAB as a trial forum (well beyond the scale of past interference practices), perhaps it is time to revise the Board's Standard Operating Procedure (SOP) so that a consistent message can be sent with informative/precedential designations. The current SOP was drafted when the Board was 1/3 the current size and requires a majority of all Board members for precedential designation. As the Board grows, the current SOP may be limiting the PTAB's ability to issue reliable guidance on key issues of AIA trial practice.