That is, we are right back where we started in Target.
The POP explained 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.
As to factors considered in exercising discretion, the POP noted that the time bar under 35 U.S.C. § 315(b) is one of several factors that may be considered when exercising discretion under § 315(c). In order to balance various considerations, including those raised by other statutes such as the time bar of § 315(b), the Board indicated it will exercise discretion only in limited circumstances—namely, where fairness requires it and to avoid undue prejudice to a party.
As to examples of such situations, the POP explained:
" [T]he Board will exercise this discretion only in limited circumstances—namely, where fairness requires it and to avoid undue prejudice to a party. Circumstances leading to this narrow exercise of our discretion may include, for example, actions taken by a patent owner in a co-pending litigation such as the late addition of newly asserted claims. On the other hand, the Board does not generally expect fairness and prejudice concerns to be implicated by, for example, the mistakes or omissions of a petitioner.
So, there you have it. Issue joinder, while now officially deemed permissible under 315(c), should be relatively limited in application to the case of the amended complaint scenario discussed above. It is not a tool to secure a “do-over.” As the underlying motion in Proppant was seeking to target a claim denied in the first petition, it was denied.