Issue Joinder on the Way Out?
As discussed some months back, the Patent Trial & Appeal
Board's (PTAB) new Precedential Opinion Panel (POP) decided its
first case 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).
This practice, known as "issue joinder" is now before
the Federal Circuit. And, the Court does not appear receptive to
the agency's statutory interpretation.
As a reminder, the POP explained in its decision that the
statute's use of "any person" that is not the patent
owner, could not be used to define "party" to exclude an
existing party. As such, the Board reasoned it had discretion to
join any party — even an existing party.
