{"id":2918,"date":"2020-09-05T00:25:00","date_gmt":"2020-09-05T05:25:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2918"},"modified":"2020-09-13T20:30:24","modified_gmt":"2020-09-14T01:30:24","slug":"%c2%a7315c-does-not-allow-board-to-join-iprs-or-to-add-issues-to-an-ipr-via-joinder","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2918","title":{"rendered":"\u00a7315(c) Does Not Allow Board to Join IPRs or to Add Issues to an IPR via Joinder"},"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] (September 4, 2020), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the Board\u2019s final written decisions on the \u2019245 and \u2019657 patents in IPR2016-01156 and IPR2016-01159, affirmed the Board\u2019s final written decision on the \u2019552 patent in IPR2016-01158, and affirmed-in-part the Board\u2019s final written decision on the \u2019356 patent in IPR2016-01157; and dismissed as moot Facebook\u2019s appeal of the Board\u2019s final written decision on the \u2019356 patent with respect to claims 14 and 33.<\/p>\n\n\n\n

Windy City Innovations filed a complaint accusing Facebook of infringing U.S. Patent Nos. 8,458,245, 8,694,657, 8,473,552, and 8,407,356 (\u201cthe \u2019356 patent\u201d). The \u2019245, \u2019657, \u2019552, and \u2019356 patents share a common specification, claim priority to the same parent application, and generally relate to methods for communicating over a computer-based network.<\/p>\n\n\n\n

Exactly one year after being served with Windy City\u2019s complaint Facebook timely petitioned for inter partes review (\u201cIPR\u201d) of several claims of each patent (IPR2016-01156, IPR2016-01157, IPR2016-01158, IPR2016-01159). At that time, Windy City had not yet identified the specific claims it was asserting. The PTAB instituted IPR of each patent. After Windy City identified the claims it was asserting in the district court, Facebook filed two additional petitions for IPR (IPR2017-00659, IPR2017-00709) of additional claims of the \u2019245 and \u2019657 patents, along with motions for joinder to the already-instituted IPRs on those patents. By the time of these filings, the one-year time bar of \u00a7315(b) had passed, but the PTAB nonetheless instituted Facebook\u2019s two new IPRs, granted Facebook\u2019s motions for joinder, and terminated the new IPRs.<\/p>\n\n\n\n

The Board delivered a mixed result, holding that Facebook had shown by a preponderance of the evidence that some of the challenged claims are unpatentable as obvious but had failed to show that others were unpatentable as obvious. Many of the claims the Board found unpatentable were claims only challenged in the late-filed petitions. Facebook appealed, and Windy City cross-appealed on the Board\u2019s obviousness findings and challenging the Board\u2019s joinder decisions allowing Facebook to join its new IPRs to its existing IPRs and to include new claims in the joined proceedings.<\/p>\n\n\n\n

The Federal Circuit held that the Board erred in its joinder decisions 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. Because joinder of the new claims was improper, it vacated the Board\u2019s final written decisions as to those claims. However the Federal Circuit lacked authority to review the Board\u2019s institution of the two late-filed petitions, so it remanded them to the Board to consider whether the termination of those proceedings finally resolved them.<\/p>\n\n\n\n

The Federal Circuit began by rejecting Facebook’s argument that the Board’s joinder decision was not reviewable. The Federal Circuit said that the plain language of \u00a7 315(c) requires two different decisions. First, the statute requires that the Director determine whether the joinder applicant\u2019s petition for IPR \u201cwarrants\u201d institution under \u00a7 314. The Federal Circuit said that it may not review this decision, whether for timeliness or to consider whether the petitioner is likely to succeed on the merits. Second, to effect joinder, \u00a7 315(c) requires the Director to exercise his discretion to decide whether to \u201cjoin as a party\u201d the joinder applicant. The statute makes clear that the joinder decision is made after<\/em> a determination that a petition warrants institution, thereby affecting the manner in which an IPR will proceed. The joinder decision is a separate and subsequent decision to the intuition decision. Nothing in \u00a7 314(d), nor any other statute, overcomes the strong presumption that the Federal Circuit has jurisdiction to review that joinder decision.<\/p>\n\n\n\n

Windy City argued that \u00a7 315(c) does not authorize same-party joinder and that it does not authorize joinder of new issues material to patentability, such as new claims or new grounds. Facebook disputed both points, arguing that \u00a7 315(c) authorizes same-party joinder and that it does not prohibit joinder of new issues. The Federal Circuit agreed with Windy City on both points. The clear and unambiguous text of \u00a7 315(c) does not authorize same-party joinder, and does not authorize the joinder of new issues. Beginning with the statutory language, \u00a7 315(b) articulates the time-bar for when an IPR \u201cmay not be instituted.\u201d 35 U.S.C. \u00a7 315(b). But \u00a7 315(b) includes a specific exception to the time bar. By its own terms, \u201c[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).\u201d Subsection (c) provides that after an inter partes review has been instituted, the Director, in his or her discretion, \u201cmay join\u201d \u201cas a party to that inter partes review\u201d \u201cany person\u201d who has filed \u201ca petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.<\/p>\n\n\n\n

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 per-son to a proceeding in which that person is already a party. The Federal Circuit found the Board\u2019s interpretation of \u00a7 315(c) is contrary to the unambiguous meaning of the statute for a second reason. The Federal Circuit said that the language in \u00a7315(c) does no more than authorize the Director to join 1) a person 2) as a party, 3) to an already instituted IPR. This language does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding. \u00a7315(c) authorizes joinder of a person as a party, not \u201cjoinder\u201d of two proceedings.<\/p>\n\n\n\n

<\/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] (September 4, 2020), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the Board\u2019s final written decisions on the \u2019245 and \u2019657 patents in IPR2016-01156 and IPR2016-01159, … 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-2918","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\/2918","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=2918"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2918\/revisions"}],"predecessor-version":[{"id":2919,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2918\/revisions\/2919"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2918"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2918"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2918"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}