Facebook, Inc. v. Windy City Innovations, LLC, Appeal Nos. 2018-1400 et al. (Fed. Cir. Sept. 4, 2020)

The only precedential decision this week was a modified panel decision of a prior precedential opinion following a petition for rehearing or rehearing en banc. The en banc court declined to take the matter.

In short, after Facebook was sued for infringement, it petitioned for IPRs. But the complaint did not specify which of the more than 800 claims of those patents were allegedly infringed. Facebook challenged some, but not all, of the claims. More than a year later, Windy City identified its infringement allegations, which included some claims that Facebook had not challenged in its IPRs. Facebook filed two new petitions for IPRs of those claims along with motions to join them to the existing IPRs. The Board granted the motion for joinder and terminated the two new IPRs. The primary issues were whether a party can later join itself to an IPR that it had previously filed, and whether a party can add new claims to an existing IPR through joinder when those claims would otherwise be time-barred. The Federal Circuit concluded, with respect to both, that it could not. We covered the original decision as our Case of the Week on March 23, 2020. That write-up can be found here. Facebook sought rehearing.

The revised opinion addresses the question of whether the Court has jurisdiction to review the PTAB’s joinder decision. Both Facebook and the PTO argued that it does not, relying on recent jurisprudence concerning appellate review of institution decisions. The Federal Circuit panel held that joinder decisions are different from institution decisions, and are therefore reviewable on appeal. As the Court explained:

To join a party to an instituted IPR, the plain language of § 315(c) requires two different decisions. First, the statute requires that the Director … determine whether the joinder applicant’s petition for IPR “warrants” institution under § 314. We may not review this decision, whether for timeliness or to consider whether the petitioner is likely to succeed on the merits. See Thryv, 140 S. Ct. at 1373 …

Second, to effect joinder, § 315(c) requires the Director to exercise his discretion to decide whether to “join as a party” the joinder applicant. That is, the statute requires the Director … to make a “joinder decision.” … The statute makes clear that the joinder decision is made after a determination that a petition warrants institution, thereby affecting the manner in which an IPR will proceed. … Thus, the joinder decision is a separate and subsequent decision to the intuition decision. Nothing in § 314(d), nor any other statute, overcomes the strong presumption that we have jurisdiction to review that joinder decision. …

Accordingly, we have jurisdiction to review the Board’s joinder decisions in this case to determine whether the Board (on behalf of the Director) acted outside any statutory limits under § 315(c).

The opinion can be found here.

By Nika F. Aldrich

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