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.
At an oral hearing last week (first reported by IPlaw360) in Facebook, Inc. v. Windy City Innovations, LLC, the Federal Circuit took issue with the Board’s statutory analysis. Judge Plager explained: “So the director needs to get his act together to make sure he understands what you’ve got to do to get the substantive material across the boundary, and that’s not joinder….Joinder is joinder of persons.” The panel then went on to question why the agency had not intervened to explain/defend its issue joinder practice.
Yesterday the Court issued an order (here) seeking the agency’s input.
" The court now invites the Director of the United States Patent and Trademark Office to file a brief expressing his views on the following issue: what, if any, deference should be afforded to decisions of a Patent Trial and Appeal Board Precedential Opinion Panel (“POP”), and specifically to the POP opinion in Proppant Express Investments, LLC v. Oren Technologies, LLC, No. IPR2018-00914, Paper 38 (P.T.A.B. Mar. 13, 2019).
Given the body language of the court, it seems unlikely that any deference will be accorded. That is, if there is no perceived ambiguity in 35 U.S.C. § 315(c) there would be no basis to accord Chevron deference. It seems more likely that the Court is just looking to complete the record before reversing the agency’s issue joinder practice.
Of course from a practitioners perspective, this is pretty much a non-event. Issue joinder is an exceedingly rare occurrence. Still, an unfortunate development for the agency’s nascent POP jurisprudence.