The Federal Circuit has ruled in Facebook, Inc. v. Windy City Innovations, LLC that the Patent Trial and Appeal Board’s (PTAB) practice of permitting petitioners to join themselves as parties to existing reviews and adding new issues by joining new petitions to earlier ones is contrary to the America Invents Act (AIA).

Windy City filed a patent infringement suit against Facebook, to which Facebook responded by filing inter partes review (IPR) petitions challenging several claims in the patents at issue. At that time, Windy City had not yet identified the specific claims it was asserting in the district court proceeding. The PTAB then instituted IPR proceedings of each patent. After Windy City identified the claims it was asserting in district court, Facebook filed two additional IPR petitions, along with motions for joinder on the already instituted IPRs. By the time of the second filing, however, the one-year time bar of § 315(b) had passed. Nonetheless, the PTAB instituted the new IPRs and granted Facebook’s motions for joinder.

The Federal Circuit held that “the clear and unambiguous text of [the AIA] does not authorize joinder of two proceedings, and does not authorize the Director [of the U.S. Patent and Trademark Office] to join a person to a proceeding in which that person is already a party.” While the AIA grants the Director discretion to join “any person” as a party to an instituted review, the court found that that discretion does not extend to a party joining itself. “It would be an extraordinary usage of the term ‘join as a party’ to refer to persons who were already parties,” the court stated. The court also found that nothing in the AIA permits joinder of petitions to add new issues, because an IPR that is instituted “is governed by its own petition and confined to the claims and grounds challenged in that petition.” The AIA allows the Director discretion to join a person as a party to an already instituted IPR but does not permit the joined party to bring new issues from the newer proceeding into the existing proceeding.

In a section titled “additional views,” the court also considered whether the PTAB Precedential Opinion Panel (POP) is entitled to Chevron deference, as the POP had originally ruled that parties could join themselves and add new issues to existing IPRs. Chevron deference applies to agencies to which Congress has given the authority to interpret the law and make rules that carry the force of law. The court found that the PTAB is therefore not entitled to Chevron deference, as it found that “notably absent from the AIA, accordingly, is any congressional authorization, for either the Director or the Board, to undertake statutory interpretation through POP opinions.” While this finding was not part of the opinion, it likely will prove influential on any subsequent panel that may consider this issue.

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