Same Party Joinder, Joinder of New Issues Not Permitted in IPR

November 2020

 

Facebook, Inc. v. Windy City Innovations, LLC, No. 18-1400 (Fed. Cir. Sept. 4, 2020)

In Facebook, the Federal Circuit held that the Patent Trial and Appeal Board’s joinder decisions are appealable to the Federal Circuit.  As a result, the court found that the PTAB erred by permitting Facebook to join its own inter partes review.

Windy City alleged Facebook infringed its patents relating to methods of communicating over a computer-based network. The Windy City complaint included four patents without specifying which claims were being asserted. Prior to expiration of the statutory one-year time bar, Facebook filed IPR petitions challenging some, but not all of claims. After expiration of the statutory one-year time bar, Windy City identified the claims it was asserting in litigation, including claims not challenged in Facebook’s orginal IPR. In response, Facebook filed additional IPRs with motions to join the new proceedings to the already-instituted IPR. Facebook’s motions for joinder are granted, and the PTAB held that some of the claims were invalid.

Windy City appealed the joinder decision to the Federal Circuit. Facebook argued that the appeal was improper, because it contended that appeals from joinder determinations are barred by statute.

The Patent Act provides that the PTAB’s decision on whether or not to institute IPR is non-appealable. The Supreme Court has construed this to preclude appeals not only of the institution decision, but also of matters that are closely tied to the institution decision. No court had yet ruled whether a decision to permit a party to join an instituted IPR is sufficiently tied to the institution decision so that no appeal would be permitted from the joinder decision.

The Federal Circuit held that joinder decisions are appealable. Because a joinder decision occurs after institution of the IPR, and only affects how the IPR will proceed, rather than whether it will proceed, it is a separate process with a different purpose than institution, and an adverse joinder decision could be appealed.

The Federal Circuit also held that the PTAB erred in granting Facebook’s motion for joinder. The court determined that the unambiguous statutes only authorized the joinder of a person as a party to an instituted IPR, which did not permit motions for joinder where the movant was already a party (i.e., self-joinder). The court found that a joined party is not permitted to bring new issues into the existing proceeding. As such, the court vacated-in-part the final written decision from the IPR in reference to the claims improperly added through joinder.

Key Takeaway: Joinder to an IPR proceeding is a separate and distinct issue from IPR institution. As such, while PTAB institution decisions are non-appealable, PTAB joinder decisions are appealable to the Federal Circuit. In addition, the PTAB is not permitted to grant self-joinder or new issue-joinder to an existing IPR proceeding.