Facebook v Windy City Innovations
Facebook, Inc., v. Windy City Innovations, LLC
Nos. 2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537,2018-1540, 2018-1541 Opinion Issued: March 18, 2020 Opinion Modified: September 4, 2020 Before Chief Judge Prost, with Circuit Judges Plager and O’Malley.
Windy City Innovations, LLC (“Windy City”) filed a complaint accusing Facebook, Inc. (“Facebook”) of infringing certain patents. Exactly one year after being served with Windy City’s complaint, Facebook timely petitioned for inter partes review (“IPR”) of several claims of each patent. Windy City had not yet identified the specific claims it was asserting in the district court proceeding. The Patent Trial and Appeal Board (“Board”) instituted IPR of each patent. After Windy City had identified the claims it was asserting in the district court litigation, Facebook filed two additional petitions for IPR of additional claims, along with motions for joinder to the already instituted IPRs on those patents. The Board granted Facebook’s motions for joinder even though the one year deadline for institution had passed for the two additional petitions. The Court held that joinder of the new claims was improper, vacated the Board’s final written decisions as to those claims, and remanded for the Board to consider whether the termination of those proceedings finally resolved them.
Windy City argued that 35 U.S.C. § 315(c) does not authorize same-party joinder and does not authorize joinder of new issues. Facebook and the PTO relied on 35 U.S.C. § 314(d), which provides that “[t]he determination by the Director to institute an inter partes review under this section shall be final and nonappealable,” citing Cuozzo Technologies, LLC v. Lee. Windy City countered that the Board’s joinder decisions in this case are “a separate procedural process with separate requirements and a different purpose than institution.” The Court agreed with Windy City, stating that “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.”
After determining that it had jurisdiction, the Court stated that “(t)he clear and unambiguous text of § 315(c) does not authorize same party joinder, and does not authorize the joinder of new issues.” The Board did not join a new party. “[A]n essential premise of the Board’s decision was that § 315(c) authorizes two proceedings to be joined, rather than joining a person. That understanding of § 315(c) is contrary to the plain language of the provision.” The Court concluded that the “clear and unambiguous language of § 315(c)” does not authorize a person to be joined as a party to a proceeding in which it is already a party.
The Court separately rendered “Additional views” based upon arguments that § 315(c) is ambiguous. According to Facebook and the government, the Board’s view regarding joinder should therefore be adopted. However, the Court concluded that even if the statute was ambiguous, it would alternatively resolve the case in the same way. The Court stated that no deference was due to the Board’s Precedential Opinion Panel.
Read more: Federal Bar member attorneys may access the full case summary by registered patent attorney B.C. “Bill” Killough in the September 2020 issue of Federal Circuit Case Digest.
B.C. Killough is a registered patent attorney based in Charleston, SC. On behalf of his clients, Bill has obtained more than 300 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.
Additionally, you may read the full opinion here.