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Full of Hot Air? PTAB Joinder Decisions Under § 315(c) Are Appealable

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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Joined Parties Have Rights Too

In vacating an unpatentability decision by the Patent Trial and Appeal Board (Board), the US Court of Appeals for the Federal Circuit found that the rights of a joined party to an inter partes review (IPR) proceeding applies to the entirety of the proceedings and includes the right of appeal. Fitbit, Inc. v. Valencell, Inc., Case No. 19-1048 (Fed. Cir. July 8, 2020) (Newman, J.).

Apple petitioned the Board for IPR of certain claims of a patent owned by Valencell. The Board granted the petition in part, instituting review of certain claims and denying review of other claims. After institution of the Apple IPR, Fitbit filed an IPR petition for the instituted claims and moved for joinder with Apple’s IPR. The Board granted Fitbit’s petition, granted the motion for joinder and terminated Fitbit’s separate proceeding.

After the Apple/Fitbit IPR hearing, but before any Final Written Decision was issued, the Supreme Court decided SAS Institute v. Iancu (IP Update, Vol. 21, No. 5), holding that the America Invents Act requires that all patent claims challenged in an IPR petition must be reviewed by the Board if the petition is granted. Accordingly, the Board re-instituted the Apple/Fitbit IPR to add the previously denied patent claims. The Board’s Final Written Decision found the originally instituted claims unpatentable, but the newly instituted claims not unpatentable. After the decision, Apple withdrew from the proceeding. Fitbit appealed the decision as to newly instituted claims that had been found not unpatentable.

On appeal, Valencell challenged Fitbit’s right to appeal as to the newly instituted claims. 35 U.S.C. § 319 provides that “[a]ny party to the inter partes review shall have the right to be a party to the appeal.” Valencell argued that Fitbit does not have the status of “party” for purposes of appeal because Fitbit did not request review of the newly instituted claims in its initial IPR petition, did not request leave to amend its initial petition after the Supreme Court’s decision in SAS Institute and did not submit a separate brief with respect to the non-instituted claims after the joined IPR was re-instituted. Valencell also argued that because the Board stated that Fitbit would have “limited participation, if at all, and required Fitbit to seek authorization from the Board before filing any papers,” Fitbit was not a full participant in the joined IPR.

Fitbit responded that Valencell did not object to Fitbit’s joinder and did not object to or seek to qualify Fitbit’s continued participation after the Board re-instituted the joined IPR to include the new claims, so there was only one IPR. Fitbit also cited the Board’s statement in granting its joinder motion that the “[d]ecision addressing the status of each challenged claim in this proceeding applies to all parties.” Fitbit acknowledged that it did not seek to file a separate brief after the new claims were added to the IPR, but claimed no separate brief was needed to present the issues.

The Federal Circuit agreed with Fitbit, finding that the circumstances [...]

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No En Banc Review of Non-Institution Decision After Remand of Partial Institution

Addressing a panel decision that affirmed a Patent Trial and Appeal Board (PTAB) holding denying institution of an inter partes review (IPR) after an earlier partial institution decision, the US Court of Appeals for the Federal Circuit denied both a panel rehearing and a rehearing en banc over a dissent from Judge Newman. BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., Case Nos. 19-1643, -1644, -1645 (Fed. Cir. January 13, 2020) (Newman, J, dissenting).


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