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
