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No Same-Party Joinder and Joinder of New Issues Through § 315(c)

On March 18, 2020, in Facebook, Inc. v. Windy City Innovations, LLC, the Federal Circuit held that 35 U.S.C. § 315(c) does not authorize same-party joinder and does not authorize joinder of new issues.

Windy City Innovations, LLC (“Windy City”) brought a patent infringement suit against Facebook, Inc. (“Facebook”) in a district court. Exactly one year after being served with Windy City’s complaint, Facebook timely petitioned for inter partes review (“IPR”), challenging several claims of Windy City’s patents. At that time, Windy City had not identified the claims asserted in the infringement suit. The Patent Trial and Appeal Board (“the Board”) instituted IPRs of some claims of Windy City’s patents. After the one-year time bar of 35 U.S.C. § 315(b) passed, Windy City identified claims it was asserting in the infringement suit. Some of the claims asserted in the infringement suit were not included in the instituted IPRs. Thus, Facebook filed two additional petitions for IPR of the missing claims along with motions for joinder to the already instituted IPRs. The Board instituted Facebook’s two additional IPRs and granted Facebook’s motions for joinder. Later, the Board found that some of the challenged claims were unpatentable as obvious while some were not. Facebook appealed and Windy City cross-appealed.

35 U.S.C. § 315(c) authorizes the Director to “join as a party to that [existing] inter partes review any person who” meets certain requirements. On appeal, Windy City argued that § 315(c) does not authorize (1) same-party joinder in an IPR proceeding – allowing a party to be joined to an existing IPR proceeding in which it was already a party – and (2) joinder of new issues material to patentability to an existing IPR proceeding.

Same Party Joinder

The Federal Circuit agreed with Windy City and ruled that § 315(c) does not authorize a person to be joined as a party to a proceeding in which it is already a party. The Court noted that its decision conflicts with the decision of the Board’s Precedential Opinion Panel (“POP”) in Proppant Express Investments, LLC v. Oren Technologies, LLC, No. IPR2018-00914 (PTAB Mar. 13, 2019) in which the POP concluded that § 315(c) permits a petitioner to be joined to a proceeding in which it is already a party. In that case, the Board broadly interpreted the phrase “any person” within the meaning of § 315(c) to cover “every person who properly files a petition that warrants institution,” including oneself. The Court disagreed with the Board’s interpretation and held that the phrase “join as a party to that inter partes review” included in § 315(c) limits the range of “any person” to be “those who … are capable of being joined as a party to proceeding.” The Federal Circuit thus concluded that § 315(c) does not authorize a person to be joined as a party to a proceeding in which it is already a party.

Joinder of New Issues

The Federal Circuit also agreed with Windy City and ruled that § 315(c) does not authorize “the joined party to bring new issues from its new proceeding into the existing proceeding, particularly when those new issues are otherwise time-barred.” On appeal, Facebook argued that § 315(c) does not expressly prohibit introduction of new issues in the joinder proceedings. The Court, however, held that the lack of an express prohibition does not make § 315(c) ambiguous as to whether it permits joinder of new issues, and explained that the statute “simply permits the Director, at his or her discretion, to join any person as a party to an already-instituted IPR” which “is governed by its own petition and is confined to the claims and grounds challenged in that petition” (emphasis added). The Court also held that no deference to the PTO’s interpretation of § 315(c) under Chevron, U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837 (1984) is due because the statutory language of § 315(c) is unambiguous and clear.

Additional Views

Chief Judge Prost, Judge Plager, and Judge O’Malley provided additional views in which they opined that even if the statutory language was ambiguous, no Chevron deference would be given to the POP opinion. The panel noted the lack of “any congressional authorization, for either the Director or the Board to undertake statutory interpretation through POP opinions.”

It is clear from this opinion that neither same-party joinder nor joinder of new issues is permitted through § 315(c). Thus, if there is a co-pending patent infringement suit in a district court and the district court does not require the patent owner to identify claims asserted in the patent infringement suit until after the one-year bar date of the IPR proceeding, the alleged infringer should consider including all claims in the IPR petition that could be asserted as infringed in the litigation.