Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Facebook, Inc. v. Windy City Innovations, LLC, 2018-1400 et al. (Mar. 18, 2020).
Windy City sued Facebook for infringement of patents claiming methods for communicating over a computer-based network. One year after being served with the complaint, Facebook timely filed petitions for, and the Patent Trial and Appeal Board instituted, Inter Partes Review (IPR) proceedings challenging the validity of certain claims of the asserted patents. Months later, after Windy City identified in the litigation action which claims were asserted against Facebook, Facebook filed two new IPR petitions challenging additional claims of the Windy City patents, along with motions for joinder to the already instituted IPRs on those patents. Although the one-year time bar of § 315(b) had passed, the Board instituted the two new IPRs, and granted the motions for joinder. In its final written decisions, the Board found some, but not all, of the challenged claims unpatentable as obvious. Facebook appealed, and Windy City cross-appealed on obviousness and on the Board’s joinder decisions.
The Federal Circuit affirmed-in-part, vacated-in-part, and dismissed-in-part. Beginning with joinder, the Court held 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.” The Court explained that “[i]t would be an extraordinary usage of the term ‘join as a party’ to refer to persons who were already parties.” The Court further explained that the plain language of § 315(c) is addressed to joining a “party” to a proceeding, not to the joining together of two proceedings (a topic addressed by the consolidation provision of § 315(d)). Accordingly, the Court vacated the portions of the Board’s decisions addressing claims added in the new IPRs, which in the absence of joinder were not timely filed. The Court next turned to the merits of the Board’s obviousness determinations on the claims that were instituted in the original IPRs. The Court affirmed the Board’s determinations on these claims, with the exception of two claims as to which the Court dismissed the appeal as moot. In a separate writing, the Court expressed the additional view that the interpretation of § 315(c) given in the Board’s Precedential Opinion Panel decision in Proppant is not deserving either of Chevron or Skidmore deference.