Before Prost, Plager, and O’Malley. Appeal from the Patent Trial and Appeal Board.
Summary: The Federal Circuit has jurisdiction to review challenges to the Board's joinder decision in an instituted IPR. An IPR petitioner may not join itself to an earlier IPR in which it was already a party, and may not add new claims or issues to the earlier IPR through such joinder.
Windy City sued Facebook for infringement of three patents. Facebook timely petitioned for inter partes review on several claims of each patent. After Facebook filed its IPR petitions, Windy City identified its asserted claims. By this time, the one-year time bar in 35 U.S.C. § 315(b) to file an IPR had lapsed. Facebook filed two additional IPR petitions challenging the asserted claims, and filed a motion asking the Board to join the new IPR petitions to the previously instituted IPRs under § 315(c). Although the additional petitions would have otherwise been time-barred under § 315(b), the Board granted the motions for joinder, allowing the new claims into the existing proceedings. In its final written decisions, the Board cancelled some of the claims that Facebook challenged in its later petitions.
In March 2020 on appeal, the Federal Circuit held that the Board erred in (1) allowing Facebook to join itself to its own prior IPRs and (2) joining challenges to additional patent claims. As the Federal Circuit explained, § 315(c) authorizes the USPTO to join a person as a party to an existing proceeding, not to join two separate proceedings. The “clear and unambiguous text of § 315(c) does not authorize same-party joinder, and does not authorize the joinder of new issues.”
Facebook filed a combined petition for panel rehearing and rehearing en banc. The en banc court denied Facebook's petition. The original panel revised its opinion to address the Supreme Court interim decision in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367, 1370 (2020). In Thryv, the Supreme Court held that the USPTO’s interpretation of § 315(b)’s time bar is not appealable under § 314(d) because it is closely related to the USPTO’s institution decision. In its revised opinion, the Federal Circuit held it has jurisdiction to review the Board’s joinder decisions. The Federal Circuit noted § 315(c) requires (1) an institution decision, whether the joinder applicant's petition for IPR warrants institution, and (2) a joinder decision, whether to "join as a party" the joinder applicant. The Federal Circuit held that the joinder decision is separate and subsequent to the institution decision. The Federal Circuit acknowledged it may not review the institution decision, such as for timeliness as in Thryv, but found that nothing overcomes the strong presumption that it has jurisdiction to review the joinder decision.
Thus, the Federal Circuit vacated the part of the Board's final written decision that cancelled claims raised in the improperly joined petitions. Additionally, the Federal Circuit, noting it lacks authority to review the Board’s institution of the two late-filed petitions, remanded to the Board to consider whether the termination of the proceedings finally resolves them.