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.