{"id":2721,"date":"2020-03-18T16:44:36","date_gmt":"2020-03-18T20:44:36","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2721"},"modified":"2020-03-21T12:51:19","modified_gmt":"2020-03-21T16:51:19","slug":"%c2%a7-315c-does-not-authorize-joinder-of-two-proceedings-or-joining-a-person-to-a-proceeding-in-which-that-person-is-already-a-party","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2721","title":{"rendered":"\u00a7 315(c) Does Not Authorize Joinder of Two Proceedings, or Joining a Person to a Proceeding in Which that Person is Already a Party"},"content":{"rendered":"\n

In Facebook, Inc., v. Windy City Innovations, LLC<\/a>, [2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537, 2018-1540, 2018-1541] (March 18, 2020) the Federal Circuit hold 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.<\/p>\n\n\n\n

Exactly one year after being served with Windy City\u2019s complaint for infringement of U.S. Patent Nos. 8,458,245, 8,694,657, 8,473,552, and 8,407,356, Facebook petitioned for inter partes review of several claims of each of the patents.\u00a0 Seven\u00a0 months later, after Windy City identified the claims it was asserting, Facebook filed two additional petitions for IPR of additional claims of two of the challenged patents, together with a motion for joinder.\u00a0 Although this was now well more than a year after Facebook had been served, the Board nonetheless instituted Facebook\u2019s two new IPRs, and granted Facebook\u2019s motions for joinder. <\/p>\n\n\n\n

The Federal Circuit examined the statutory language and concluded that joinder was not proper.\u00a0 It noted that the plain language of \u00a7 315(c) indicates that the exception to the time bar offered by the joinder provision only applies if there is an instituted IPR, meaning that a first petition must have been timely under \u00a7 315(b), among other requirements.\u00a0\u00a0 It went on to note that subsection (c) then provides that after an inter partes review has been instituted, the Director, in his or her discretion, \u201cmay join<\/em>\u201d \u201cas a party to that inter partes review<\/em>\u201d \u201cany person<\/em>\u201d who has filed \u201ca petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.\u201d<\/p>\n\n\n\n

The Federal Circuit observed that the Board was operating under the premise that \u00a7 315(c) authorizes two proceedings <\/em>to be joined, rather than joining a person as a party <\/em>to an existing proceeding.\u00a0 The Federal Circuit said that the Board\u2019s understanding of \u00a7 315(c) is contrary to the plain language of the provision. Section 315(c) authorizes the Director to \u201cjoin as a party to [an IPR] any person who\u201d meets certain requirements, i.e., who properly files a petition the Director finds warrants the institution of an IPR under \u00a7 314. The Federal Circuit said that no part of \u00a7 315(c) provides the Director or the Board with the authority to put two proceedings together. That, the Federal Circuit pointed out, is the subject of \u00a7 315(d), which provides for \u201cconsolidation,\u201d among other options, when \u201c[m]ultiple proceedings\u201d involving the patent are before the PTO. <\/p>\n\n\n\n

The Federal Circuit admitted the possibility that the Board was in fact intending to join Facebook as a party to its previously instituted IPRs, and not joining the IPR proceedings themselves, but found that the clear and unambiguous language of \u00a7 315(c) does not.\u00a0 The Federal Circuit said it would be an extraordinary usage of the term \u201cjoin as a party\u201d to refer to persons who were already parties.\u00a0 The Federal Circuit concluded that a party cannot logically be \u201cjoin[ed] as a party\u201d in a proceeding if it is already a party to that proceeding.\u00a0 The Federal Circuit held that the clear and unambiguous meaning of \u00a7 315(c) does not authorize joinder of two proceedings, and does not authorize the Director to join a person to a proceeding in which that person is already a party. <\/p>\n","protected":false},"excerpt":{"rendered":"

In Facebook, Inc., v. Windy City Innovations, LLC, [2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537, 2018-1540, 2018-1541] (March 18, 2020) the Federal Circuit hold that the Board erred in allowing Facebook to join itself to a proceeding in which it was already … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-2721","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2721","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2721"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2721\/revisions"}],"predecessor-version":[{"id":2722,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2721\/revisions\/2722"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2721"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2721"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2721"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}