In view of the Supreme Court’s Thryv[i] decision, the Federal Circuit recently reissued its original March 2020 decision in Facebook v. Windy City[ii] (Windy City I) after granting Facebook’s petition for rehearing and denying Facebook’s petition for en banc review. The reissued, second decision[iii] (Windy City II) (1) affirmed that § 314(d) does not preclude the court from reviewing the Board’s joinder decision under § 315(c), and (2) reaffirmed that, based on the unambiguous text of § 315(c), same party / new issue joinder is impermissible under the statute.
 
In Windy City I, the court held that “the Board erred 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.”[iv] A month after this decision, the Supreme Court issued its Thryv decision, which held that § 314(d) precludes judicial review of many institution phase issues, including the PTO's application of § 315(b)'s one year time-bar. In view of Thryv, the Federal Circuit invited the Windy City I parties to brief the issue of whether § 314(d) also precludes judicial review of the PTO’s application of joinder under § 315(c). In Windy City II, the court held that it had “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).”[v]
 
In Windy City I, the Federal Circuit held that the clear and unambiguous language of § 315(c) does not allow same-party or new issue joinder. The court held that the Director’s authority under the statute to join “any person” as a party to an inter partes review does not refer to “persons who were already parties.” [vi] The court reasoned that “[i]t would be an extraordinary usage of the term ‘join as a party’ to refer to persons who were already parties.” [vii] The court held that the Board’s conclusion in Proppant[viii] allowing same-party joinder was thus “incorrect under the unambiguous meaning of the statute.” [ix] The court further held that § 315(c) does not authorize a joined party “to bring new issues from its new proceeding into the existing proceeding.” [x] According to the court, this is because “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.”[xi]
 
In the supplemental briefing, Facebook argued that, because § 315(c) requires a request for joinder to be accompanied by a petition for IPR, “Windy City's attack on joinder is that the follow-on IPRs should not have been instituted at all.” [xii] Facebook argued that § 314(d) thus precludes judicial review of Board joinder. The PTO took a narrower approach, arguing that § 314(d) does not preclude all judicial review of Board joinder, but only where a petition filed with a request for joinder would otherwise have been untimely.[xiii] Conversely, Windy City argued that § 314(d) does not preclude judicial review because the Board’s joinder decisions are “a separate procedural process with separate requirements and a different purpose than institution.” [xiv] Windy City further argued that its appeal challenged the issue of whether the Board “exceeded the scope of its statutory authority under § 315(c) by granting Facebook's motions for joinder.” [xv]
 
The Federal Circuit agreed with Windy City.
 
In Windy City II, the Federal Circuit determined that § 314(d) did not overcome the “strong presumption” favoring judicial review of joinder decisions under 315(c).[xvi] The court reasoned that § 315(c) requires two separate determinations: (1) whether the joinder applicant's petition for IPR “warrants” institution under § 314, and (2) whether the applicant should be joined “as a party” to the inter partes review (i.e., the “joinder decision”).[xvii] Citing Thryv, the court stated that it may not review the first determination, whether for timeliness or to consider whether the petitioner is likely to succeed on the merits.[xviii] But the court held it could review the second determination because “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.”[xix] The court determined that nothing in § 314(d), nor any other statute, overcomes the strong presumption that it has jurisdiction to review the joinder decision, which is a “separate and subsequent decision to the intuition decision.”[xx]
 
The court further reasoned that Windy City’s appeal was akin to the reviewable challenge in SAS because it “concerned whether the PTO had exceeded its statutory authority as to the manner in which the already-instituted IPR proceeded.”[xxi] On the same note, the court held that Windy City’s appeal was unlike the unreviewable challenges in Cuozzo and Thryv because, unlike here, those challenges “specifically sought review of petitions that the Board had instituted and the decisions to institute those petitions, which therefore were barred by § 314(d).”[xxii] 
 
Having found that it had jurisdiction to review the Board’s decision, the Federal Circuit maintained its Windy City I decision in Windy City II, reaffirming that the Board erred in implementing same-party and new issue joinder.[xxiii] The court thus vacated-in-part the Board’s decision regarding the claims that were added through the improper joinder. With respect to those claims, the court remanded to the Board, in order for the Board to consider whether the termination of the instituted proceedings related to the two late-filed petitions finally resolves those proceedings.
 
It would appear Facebook is not left with many options, as any issues that could have been raised in its first petition for rehearing or en banc may be waived. A cert petition to the Supreme Court may be the only hope for further review of these issues. Assuming the Supreme Court will not take up the issue of which institution stage issues are appealable after just deciding Thryv, it appears the Federal Circuit may have effectively killed same-party and new issue joinder going forward. Questions will remain whether Proppant is good law since the Windy City II decision maintained the Federal Circuit’s “additional views” that the Precedential Opinion Panel (POP) decision in Proppant is not entitled to any deference.[xxiv] 

[i] Thryv, Inc v. Click-To-Call Techs., LP, 140 S. Ct. 1367 (2020).

[ii] Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313, 1318 (Fed. Cir. 2020).

[iii] Facebook, Inc. v. Windy City Innovations, LLC, Appeal No. 2018-1400, 2020 WL 5267975, (Fed. Cir. Sept. 4, 2020).

[iv] Windy City I, at 1318.

[v] Windy City II, at 7.

[vi] Windy City I, at 1324.

[vii] Id.

[viii] Proppant Express Invs., LLC v. Oren Techs., LLC, No. IPR2018-00914, Paper 38 (P.T.A.B. Mar. 13, 2019).

[ix] Windy City I, at 1324.

[x] Id., at 1325.

[xi] Id.

[xii] Windy City II, at 6.

[xiii] Id.

[xiv] Id.

[xv] Id.

[xvi] Id.

[xvii] Id.

[xviii] Id.

[xix] Id.

[xx] Id.

[xxi] Id., at 7.

[xxii] Id.

[xxiii] Id., at 12.

[xxiv] Id., at 20.