Patent Case Summaries - September 2020 #2

Alston & Bird

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Facebook, Inc. v. Windy City Innovations, LLC, Nos. 2018-1400, -1401, -1402, -1403, -1537, -1540, -1541 (Fed. Cir. (PTAB) Sept. 4, 2020) (modified). Opinion by Prost, joined by Plager and O’Malley.

Windy City sued Facebook for patent infringement, and Facebook then filed IPR petitions directed to certain claims in the asserted patents. Later, after the one-year time bar of 35 U.S.C. § 315(b) had passed, Windy City identified the claims it was asserting in the district court litigation, prompting Facebook to file additional IPR petitions along with motions for joinder to the earlier IPRs that the Patent Trial and Appeal Board had instituted. The Board granted the motions and ultimately found certain of the challenged claims unpatentable as obvious, including claims challenged only in the later-joined proceedings. Facebook appealed, and Windy City cross-appealed.

In the cross-appeal, Windy City argued that the Board’s decisions granting joinder were improper under the IPR statute and should be reversed. The Federal Circuit agreed, holding that “the Board erred in its joinder decision in allowing Facebook to join itself to a proceeding in which it was already a party, and also erred in allowing Facebook to add new claims to the IPRs through that joinder.” The Federal Circuit explained that the text of § 315(c) is clear and unambiguous in not authorizing same-party joinder or the joinder of new issues.

First, addressing same-party joinder, the Federal Circuit ruled that the statute does not authorize a person to be joined as a party to a proceeding in which it is already a party. “It would be an extraordinary usage of the term ‘join as a party’ [in § 315(c)] to refer to persons who were already parties.” The Federal Circuit noted that the Board’s Precedential Opinion Panel (POP) had reached the opposite conclusion in Proppant Express Investments, LLC v. Oren Technologies, LLC, and the court ruled that the POP’s conclusion “is incorrect under the unambiguous meaning of the statute.”

Second, addressing joinder of new issues, the Federal Circuit ruled that “the language in § 315(c) does no more than authorize 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 from its new proceeding into the existing proceeding.” The statutory provision “authorizes joinder of a person as a party, not ‘joinder’ of two proceedings.”

The Federal Circuit panel also issued an opinion providing “additional views.” The opinion addressed “what our alternative holding would be if § 315(c) were deemed ambiguous,” and specifically whether to afford the agency’s interpretation of the statute Chevron deference. The opinion stated that, “were the statute ambiguous, we would alternatively resolve this matter in the same way,” with no deference due to the POP’s interpretation of the statutory provision in Proppant.

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