IPR Joinder Statute Permits Neither Same-Party Joinder Nor Importation of Issues by a Joined Party
Facebook, Inc. v. Windy City Innovations, LLC, __ F.3d __, 2020 WL ___ (Fed. Cir. Mar. 18, 2020) (PROST, Plager, O’Malley; with additional views by all judges) (PTAB) (4 of 5 stars)
Fed Cir part-affirms, part-vacates series of written decisions finding some Windy City claims patentable, others not. Windy City’s claims relate to coordinating dissemination of multimedia information among a network of computers. The Board erred by joining multiple proceedings several otherwise time-barred proceedings to already-instituted proceedings on the same patent. The opinion describes how Facebook had filed the latter petitions after receiving Windy City’s disclosure of asserted claims in co-pending district court litigation. § 315(c), which the Board had relied on, “does not authorize same-party joinder, and does not authorize the joinder of new issues.” Op. at 12. The opinion reasons that § 315(c) addresses joinder of a party, not joinder of proceedings generally. “It would be an extraordinary usage of the term ‘join as a party’ to refer to persons who were already parties.” Id. at 15–16. The opinion notes that the Board’s Precedential Opinion Panel had come to a different result in Proppant Express Investments, No. IPR2018-914, 2019 WL 1283948 (PTAB Mar. 13, 2019), but reasons “that conclusion, which allowed same-party joinder, is incorrect under the unambiguous meaning of the statute.” Op. at 16.
The opinion also separately reasons that § 315(c) does not authorize the bringing of new issues by a joined party into an existing proceeding. The opinion analyzes the statutory text and legislative history. It recognizes the challenge for accused infringers in Facebook’s position, but concludes that the unambiguous statutory language must be given effect, and notes that accused infringers who are unable or unwilling to challenge every asserted claim via IPR would retain their ability to present a validity challenge in district court. “Accused infringers who wish to protect their option of proceeding with an IPR may, moreover, make different strategy choices in federal court so as to force an earlier narrowing or identification of asserted claims.” Op. at 22. No deference to the PTO under Chevron, 467 U.S. 837 (1984), is due because the statutory language is unambiguous. The Board’s decisions as to claims added via improper joinder are vacated.
On the technical issues for the remaining claims, the opinion analyzes the record and finds the decision supported by substantial evidence.
Additional views: Chief Judge Prost, Judge Plager, and Judge O’Malley provide an opinion with “additional views.” This opinion reasons that even were the statute ambiguous (making Chevron deference possible), “we would find that no deference is due to the POP opinion in Proppant and that the most reasonable reading of § 315(c) is the one we adopt in our majority opinion.” Add’l views at 2. The opinion discusses the creation of the Precedential Opinion Panel and reasons that it is not analogous to other entities that receive Chevron deference. It reasons that the America Invents Act conferred only limiting rulemaking authority to the Board. “In light of the limited authority delegated by the AIA, we decline to defer to the POP opinion on this issue of statutory interpretation—a pure question of law that is not within the specific expertise of the agency.” Id. at 10–11. The opinion also rejects the argument by Facebook and the government that the operation of the POP is comparable to notice-and-comment rulemaking. The opinion also reasons that there is no basis for deference under Skidmore, 323 U.S. 134 (1941), because the Director’s interpretation is inconsistent with the statute’s plain language.
KEYWORDS: INTER PARTES REVIEW; JOINDER; TIME BAR; PRECEDENTIAL OPINION PANEL; CHEVRON; ADMINISTRATIVE LAW