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Facebook v. Windy City

IPR Joinder Decisions Judicially Reviewable Post-Thryv

Facebook, Inc. v. Windy City Innovations, LLC, __ F.3d __, 2020 WL 5267975 (Fed. Cir. Sept. 4, 2020) (PROST, Plager, O’Malley; additional views by Prost, O’Malley) (PTAB) (4 of 5 stars)

In modified and reissued opinion, Fed Cir part-affirms, part-vacates IPR decision.

The reissued opinion adds a remand order. It includes a new section discussing jurisdiction to review the joinder decisions. Citing Cuozzo, 136 S. Ct. 2131 (2016); SAS, 138 S. Ct. 1348 (2018); and Thryv, 140 S. Ct. 1367 (2020); the opinion reasons that the decisions are reviewable. It describes how joinder under § 315(c) requires two different decisions by the PTAB (as an extension of the Director): a determination of whether the petition “warrants” institution (non-reviewable per Thryv, and a discretionary decision of whether joinder is appropriate. This latter determination “is a separate and subsequent decision to the institution decision. Nothing in § 314(d), nor any other statute, overcomes the strong presumption that we have jurisdiction to review that joinder decision.” Op. at 16. The reissued opinion otherwise generally repeats the analysis of the original opinion and holds that joinder was improper. On remand, the Board should determine whether its final decision in the appealed-from IPR is sufficient to finally resolve the improperly-joined (but otherwise instituted) IPRs.

There are no material changes to the Additional Views.

KEYWORDS: INTER PARTES REVIEW; JOINDER; JUDICIAL REVIEW