Expanded PTAB Panel Allows Issue Joinder | Practical Law

Expanded PTAB Panel Allows Issue Joinder | Practical Law

In Target Corp. v. Destination Maternity Corp., an expanded panel of the US Patent Trial and Appeal Board (PTAB) granted a rehearing request and held that 35 U.S.C. § 315(c) permits the joinder of issues, thereby allowing a petitioner to an instituted inter partes review (IPR) to join new issues and arguments raised in a second IPR petition filed by the same party.  

Expanded PTAB Panel Allows Issue Joinder

Practical Law Legal Update 9-600-6987 (Approx. 4 pages)

Expanded PTAB Panel Allows Issue Joinder

by Practical Law Intellectual Property & Technology
Published on 17 Feb 2015 • USA (National/Federal)
In Target Corp. v. Destination Maternity Corp., an expanded panel of the US Patent Trial and Appeal Board (PTAB) granted a rehearing request and held that 35 U.S.C. § 315(c) permits the joinder of issues, thereby allowing a petitioner to an instituted inter partes review (IPR) to join new issues and arguments raised in a second IPR petition filed by the same party.
On February 12, 2015, in Target Corp. v. Destination Maternity Corp., an expanded Patent Trial and Appeal Board (PTAB) panel granted a rehearing request and held that 35 U.S.C. § 315(c) authorizes the joinder of issues (Case IPR2014-00508 (PTAB Feb. 12, 2015)). The decision allows a petitioner to an instituted inter partes review (IPR) to join new issues and arguments raised in a later IPR petition by the same party.
On March 14, 2014, Target Corporation concurrently filed:
On September 25, 2014, three judges on a five-judge PTAB panel denied Target's joinder request, holding that 35 U.S.C. § 315(c):
  • Restricts joinder to persons and entities who are not parties to the earlier proceeding to be joined.
  • Does not permit the joinder of issues.
For more information on the original panel decision, see Legal Update, PTAB Restricts Joinder under 35 U.S.C. § 315(c) to Non-party Petitioners.
Target filed a request for rehearing of the decision denying joinder. On February 12, 2015, an expanded seven-judge PTAB panel granted Target's rehearing request and rejected the original panel's interpretation of 35 U.S.C. § 315(c). The majority held that Section 315(c)'s joinder provision is broad and contemplates the joinder of issues. The majority based its decision on:
  • The statutory language. The majority held that Section 315(c) broadly authorizes the joinder of "any person" who properly files an IPR petition. The majority explained that excluding joinder requests by the same party who instituted the earlier IPR is inconsistent with the broad scope of "any person." The majority also found support for its position in other parts of the statute, explaining that:
    • Section 315(c) permits joinder if the Director determines that the second petition warrants institution under 35 U.S.C. § 314;
    • Section 314 requires the Director to consider a petition's merits in determining whether to institute an IPR, which contemplates the joinder of issues; and
    • Section 315(c)'s requirement of a properly filed petition that explains the grounds for the invalidity challenge also suggests that joinder extends to issues.
  • The legislative history. The majority noted that nothing in the legislative history precludes the joinder of issues. The majority also cited legislative remarks that contemplate the liberal use of joinder to accommodate petitions presenting new arguments.
  • The purpose of the America Invents Act (AIA). The majority explained that its interpretation supports the AIA's purpose of reducing unnecessary litigation costs, because if joinder were denied in this case, Target's new arguments may require a separate determination by the district court.
The majority also rejected Destination Maternity's arguments, explaining that:
  • The PTAB has authority to expand the panel from five to seven members because 35 U.S.C. § 6(c) only establishes a minimum number of judges that must hear an IPR.
  • The consolidation of IPRs permitted by 35 U.S.C. § 315(d) provides a separate procedure to manage parallel proceedings, and does not negate the broad scope of joinders allowed by Section 315(c).
The majority's decision is consistent with the PTAB's past practice of allowing joinder of additional arguments by the same party. However, as noted by the dissent, none of these PTAB decisions have been designated as precedential, so there is no guarantee that a party can join multiple challenges concerning the same patent.
The three judges who denied joinder in the original decision issued a dissent reiterating their interpretation of Section 315(d).