Addressing whether it has jurisdiction to review joinder decisions made by the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit reissued a prior decision explaining that a joinder decision is reviewable because the decision occurs after the inter partes review (IPR) proceeding institutes. Facebook, Inc. v. Windy City Innovations, LLC, Case Nos. 18-1400, -1401, -1402, -1403, -1537, -1540, -1541 (Fed. Cir. Opinion Issued: Mar. 18, 2020, Opinion Reissued: Sept. 4, 2020) (Prost, C.J.) (Prost, C.J., concurring with additional views).

Windy City Innovations filed a complaint accusing Facebook of infringing four patents that collectively have 830 claims. Facebook filed a motion requesting that Windy City be forced to limit the number of asserted claims to 40 by the time of Facebook’s one-year IPR filing deadline, but the district court denied the motion. One year after it was served with the complaint, Facebook filed petitions for IPR on a subset of the 830 claims.

Five months after Facebook filed its petitions, Windy City narrowed its case to a subset of claims, including claims that were not subject to Facebook’s IPR petitions. After the PTAB instituted review based on Facebook’s petitions, Facebook immediately filed two new IPR petitions. Because the one-year time bar had passed, Facebook also filed a motion under § 315(c) to join the new IPR petitions to its now-instituted proceedings. The PTAB granted Facebook’s motion for joinder and ultimately issued a final written decision with a mixed result, cancelling some claims and finding others not unpatentable. Both parties appealed

The Federal Circuit found that the PTAB erred in allowing Facebook to use § 315(c) to join itself to its earlier-filed petitions. The Court explained that the statutory language was unambiguous, finding that the ordinary usage of “joining a person as a party to a proceeding” means that the joined party must necessarily be someone who is not already a party. The Court further explained that allowing same-party joinder would impermissibly allow the Director to join new issues to an existing proceeding. The Court found that § 315(c) only authorizes the Director to join (1) a person (2) as a party (3) to an already instituted IPR. The language does not authorize the joined party to bring new issues into the already instituted IPR proceeding. The Court found this understanding consistent with other subsections of § 315, where there is a clear distinction between § 315(c), which refers to the joinder of a person as a party, and § 315(d), which refers to the consolidation of multiple proceedings and the issues in each. The Court was sympathetic to Facebook’s policy concerns regarding patents with a large number of claims that may not be narrowed to a manageable number of asserted claims before the one-year time-bar. Nevertheless, it found that policy considerations could not overcome the unambiguous language of the statute. The Court therefore vacated the PTAB’s final written decisions as to the later-filed petitions.

After the Court issued its original opinion, Facebook filed a petition for panel rehearing, [...]

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