In Facebook, Inc. v. Windy City Innovations, LLC, No. 2018-1400 (Fed. Cir. Sept. 4, 2020), the Federal Circuit denied Appellant’s petition for rehearing en banc but granted their petition for panel rehearing in order to withdraw and replace the original March 18, 2020 opinion. The Court maintained its holding that the text of 35 U.S.C. § 315(c) does not authorize same-party or new issue joinder to an existing IPR but modified the opinion to further expand on the Court’s authority to review the Board’s joinder decision.

The Court explained that, while 35 U.S.C. § 314(d) provides that the Director’s determination to institute an IPR is “final and nonappealable,” this does not preclude review where the agency has exceeded its statutory authority. The Court explained that the joinder decision does not concern whether the petition warrants institution or whether the petitioner is likely to succeed on the merits, which the Court is precluded from reviewing under § 314(d). Rather, the joinder decision is a separate decision made after institution regarding the manner in which the IPR will proceed. Thus, the Court held that it has the authority to review the Board’s decision to determine whether it exceed the statutory authority provided to it under 35 U.S.C. § 315(c).