Last week, the U.S. Court of Appeals for the Federal Circuit issued a revised opinion in Facebook, Inc. v. Windy City Innovations, 2018-1400, et al. (opinion issued March 18, 2020, opinion modified Sept. 4, 2020).
In its initial decision, the panel held that section 315(c) does not authorize same-party joinder or joinder of new issues, and thus held that the Board erred in allowing Facebook to join itself to a proceeding in which it was already a party, and further erred in allowing Facebook to add new claims through that joinder. It further held that that the Board’s obviousness determinations were supported by substantial evidence. See https://www.ipcaseupdates.com/blog/cafc-holds-315c-does-not-authorize-same-party-joinder-or-joinder-of-new-issues.
After Facebook filed a combined petition for panel rehearing and rehearing en banc, the panel granted the petition for panel rehearing and modified and reissued its decision. In its modified decision, the panel maintained its determination that section 315(c) does not authorize same-party joinder or joinder of new issues and its determination that the Board’s obviousness determinations were supported by substantial evidence. But the panel found “we lack authority to review the Board’s institution of the two late-filed petitions” and thus vacated the Board’s final written decisions with respect to the improperly added claims and remanded for the Board to consider whether termination of the instituted proceedings related to the two late-filed petitions finally resolved them. The panel also added a new section 3 to its opinion, rejecting Facebook’s and the PTO’s threshold arguments that the Court does not have jurisdiction to review the Board’s joinder decisions.
In its initial decision, the panel also submitted “additional views,” concluding, “[i]n sum, even if § 315(c) were ambiguous—which it is not—we would conclude in the alternative that on appeal the PTO’s interpretation set forth in the [Board’s Precedential Opinion Panel] opinion in Proppant is not deserving either of Chevron or Skidmore deference. We would then conclude—again in the alternative—that the most reasonable interpretation of § 315(c) is the one we afford it in our majority opinion.” The Court maintained these “additional views” in the revised decision without edit.