Back in March, I wrote about the Federal Circuit’s decision in Facebook v. Windy City, which ruled that IPR issue-joinder is not allowed (article here). On September 4, 2020, the Court revised its opinion to address the Supreme Court’s intervening decision in Thryv, Inc. v. Click-to-Call Technologies, LP.
In Thryv, the Supreme Court held that the PTAB’s interpretation of the 35 U.S.C. § 315(b) one-year time-bar is not judicially reviewable in view of the “no appeal” provision of 35 U.S.C. § 314(d). Since then, the Federal Circuit has found other IPR institution-related decisions, such as real-party-in-interest determinations, to be non-reviewable. In the Federal Circuit’s revised panel decision in Windy City, the Court makes clear that an IPR-joinder decision involves two different inquiries and, although review of the first inquiry directed to the merits of the IPR petition is not allowed, the Court may review the PTAB’s discretionary determination on whether to allow joinder:
To join a party to an instituted IPR, the plain language of § 315(c) requires two different decisions. First, the statute requires that the Director (or the Board acting through a delegation of authority, see 37 C.F.R. §§ 42.4(a), 42.122)) determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314. We 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, § 315(c) requires the Director to exercise his discretion to decide whether to ‘join as a party’ the joinder applicant. That is, the statute requires the Director (or the Board on behalf of the Director) to make a ‘joinder decision.’ … The statute makes clear that the joinder decision is made after a determination that a petition warrants institution, thereby affecting the manner in which an IPR will proceed…. Thus, the joinder decision is a separate and subsequent decision to the intuition decision. Nothing in § 314(d), nor any other statute, overcomes the strong presumption that we have jurisdiction to review that joinder decision.
Going forward, and as it has been since March, joinder will be limited to allowing third-party petitioners to join a previously instituted proceeding, but without raising any new issues. And unless the Federal Circuit’s decision that joinder determinations are reviewable is reversed, or there is a statutory amendment, it does not appear that the PTAB will be able to change course in the future.