Director’s Precedent Setting Power Likely to Unravel Issue Joinder?
Four years ago, a divided panel of the Patent Trial & Appeal Board (PTAB) 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) in Target Corp. v. Destination Maternity Corp., (IPR2014-00508). The decision was remarkable at the time, given that 315(c) had been previously interpreted under multiple PTAB decisions as permitting such joinder practices. In fact, one such decision, Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 17, Dec. 21, 2012, had even been published as a representative order on the PTO web site.
Target filed a request for rehearing challenging the decision. In its Decision on Rehearing the PTAB expanded the panel reversed its original decision, granting Target’s petition for joinder and finding 315(c) to permit issue joinder. This decision became notorious thereafter as an example of the Board’s “panel stacking” to reach a desired outcome. (At the time I explained this was more a function of the difficulty in designating decisions precedential rather than any nefarious design against Patent Owners, that is, the PTAB needed to pick a direction by brute force where conflicting decisions prevented a consensus vote of the Board)
More recently the USPTO has welcomed a new pro-patent Director that has made clear he believes the PTAB could use some pro-patent recalibration. Recently, the agency has given the new Director the ability to make precedent virtually on his own. Based on a decision last week, it may be that the Director could unravel the Board’s chosen path on issue joinder to the delight of patent owners.