Tag Archives: Time-bar

CAN THE FEDERAL CIRCUIT REVIEW PTAB JOINDER PRACTICE AFTER THE SUPREME COURT’S THRYV DECISION?

By Tom Engellenner
In its recent decision in Facebook v. Windy City Innovations, No. 2018-1400 (March 18, 2020), a Federal Circuit panel concluded that the Patent Trial and Appeal Board (PTAB) cannot permit Facebook to join another Inter partes review (IPR) petition to its own earlier-filed IPR petition, on which a trial had already been instituted. The Federal Circuit panel concluded that section 315(c) of the America Invents Act (AIA) does not authorize either: (A) same-party joinder or (B) joinder of new issues. Facebook is currently seeking en banc review by the full Federal Circuit bench and the Supreme Court’s decision last month in Thryv, Inc. v. Click-to-Call Technologies, LP, No. 18-916 (April 20, 2020) may force the appeals court to reconsider this issue.

In the Facebook v. Windy City case the Federal Circuit panel found that the PTAB erred in allowing Facebook to join 2 IPR petitions to its earlier-filed IPR petitions. In June 2015 Windy City filed a complaint accusing Facebook of infringing several of its patents. In June 2016 – exactly one year after being served with Windy City’s complaint – Facebook filed its first IPR petitions against each patent. The PTAB instituted IPR trials on each patent. In January 2017, Facebook filed two additional IPR petitions which, standing on their own, would have been time-barred.

The PTAB panel that allowed Facebook’s secondary IPR petitions and joinder requests had been following the PTAB’s so-called precedential opinion in Proppant Express v. Oren Techs, No. IPR2018-00914, Paper 38 (P.T.A.B. Mar. 13, 2019). In Proppant, a “Precedential Opinion Panel” (POP) found that § 315(c) authorized same-party joinder because this section states that the Patent and Trademark Office (PTO) Director “may join as a party to that inter partes review any person who properly files a petition“ and the phrase “any person” in § 315(c) encompasses “every person who properly files a petition that warrants institution,” including oneself.

The Federal Circuit panel in the Facebook v. Windy City case gave short shrift to the notion that the PTAB could anoint its decision with “precedential” status by declaring the decision to be a POP opinion, sanctioned by a special super-panel that included the Patent Office Director or his designate. The Federal Circuit panel found POP decisions were not entitled to Chevron deference or even Skidmore deference (lesser standards of review for official rule making or close-call interpretations by administrative agencies of ambiguous statutory provisions). In fact, the Facebook Federal Circuit panel found POP decisions to be entitled to no deference at all and reviewed the PTAB joinder practice de novo as a matter of law.

Facebook filed for en banc review by the full Federal Circuit bench on April 17, 2020. In its en banc review petition, Facebook argues that the panel’s restrictive interpretation of “any person” was contrary to the legislative history of the AIA and the panel’s restriction on raising new issues was contrary to ordinary joinder principles where “joinder is permissible when the claims are ‘’reasonably related’ and arise out of ‘the same series of transactions or occurrences.’”

Surprisingly, Facebook’s en banc petition also raised a jurisdictional issue: whether the Federal Circuit has the authority to review institutional and joinder issues at all? The Facebook petition cited the Thryv, Inc. v. Click-to-Call Technologies case, which had been argued before the Supreme Court in December, 2019 but not yet decided at the time Facebook’s en banc petition was filed.

Facebook’s en banc petition proved to be quite prescient. Three day later the Supreme Court issued its opinion in the Thryv case, holding that §314(d) of the AIA bars judicial review of PTO decisions to institute inter partes review, and specifically, the PTO’s conclusions as to time-bars on IPR petitions (i.e., applications of §315(b)’s one-year time limit on petitions) were closely related to its decisions on whether to institute IPR trials and therefore such findings are also rendered nonappealable by §314(d).

The Federal Circuit has taken this issue seriously and issued a request to the parties, including Windy City Innovations and the PTO Director, to provide additional briefing to address “the effect, if any, of the Supreme Court’s decision in Thryv on our decision in this case.” The parties now have until June 10, 2020 to submit their additional briefing.

Ultimately, the viability of the Facebook v Windy City decision may hinge on whether the Federal Circuit sees joinder decisions as part and parcel of an IPR trial institution (and, hence, non-reviewable) or actions taken by the PTAB after institution (reviewable). And, of course, any conclusion by the full Federal Circuit bench could the subject of yet further Supreme Court scrutiny.

2019 PTAB Year In Review Part IV: THE PRECEDENTIAL OPINION PANEL (POP)

The Precedential Opinion Panel (POP), formed in September 2018, began rendering opinions in 2019. The POP is intended to provide two main functions: rehear matters in pending trials and appeals of exceptional importance; and assist the Director in determining whether a previously issued decision should be designated as precedential or informative. Its decisions are binding authority on the PTAB. In 2019, the POP issued 3 decisions, designated 8 decisions as precedential, and designated another 13 decisions informative. The three POP decisions are summarized below.

In Proppant Express Investments LLC v. Oren Technologies LLC, IPR2018-00914 (March 2019; Paper 38, precedential), the POP addressed discretionary joinder under §315(c). The POP held that (a) a petitioner may be joined to a proceeding in which it is already a named party, and (b) new issues may be added to an existing proceeding, irrespective of whether the petitioner is already a named party. The POP also advised that the one-year time bar under 35 USC §315(b) is one of several factors to consider when exercising its discretion.

In GoPro Inc. v. 360Heroes Inc., IPR2018-01754 (August 2019; Paper 38, precedential), the POP addressed the one-year time bar under § 315(b). It concluded that § 315(b)’s language, “served with a complaint alleging infringement” is plain and unambiguous. Thus, the service of a pleading alleging patent infringement triggers the one-year time period for filing an IPR petition under 35 U.S.C. § 315(b), regardless of whether the serving party lacked standing to sue or the pleading was otherwise deficient.

Notably, six days after the POP issued the GoPro decision, it also designated as precedential the decision in Cisco Systems, Inc. v. Chrimar Systems, Inc. IPR2018-01511 (PTAB Jan. 2019; Paper 11, designated precedential August 2019).. In that case, the PTAB held that that § 315(a)(1) bars institution of an inter partes review of a patent in which petitioner voluntarily dismisses its earlier civil action challenging the validity of that patent prior to filing the petition.  Continue reading →

2019 PTAB Year in Review – Part I: FEDERAL CIRCUIT APPEAL DECISIONS

By Tom Engellenner
The Federal Circuit heard a steady stream of cases from the Patent Trial and Appeal Board (PTAB) in 2019 as appeals of PTAB final written decisions seem to have become de rigueur.  PTAB appeals are now the largest single component of the Federal Circuit docket with over 600 appeals docketed in FY2019 – almost double the number of appeals that the Federal Circuit received from District Court patent decisions.

Perhaps the most noteworthy Federal Circuit decision of 2019 came in Arthrex v. Smith & Nephew No. 2018-2140 (Fed. Cir. Oct. 31, 2019) where a Federal Circuit panel ruled that the way administrative patent judges (APJs) are appointed to the PTAB was unconstitutional and vacated the decision with a remand that the case be heard again by another PTAB panel.  The decision purportedly cures this problem going forward by severing a portion of the enabling legislation that prevents the administrative judges from being fired except for cause. The Arthrex decision appears to give everyone similarly situated the right to request a remand and rehearing before a different panel.  About 100 or less pending appeals appear to fall in this category.

On December 16, all of the parties to the Arthrex case sought en banc reconsideration of the case.  Smith & Nephew and the USPTO’s solicitor general argued that the appointments clause issue and, hence, unconstitutionality was wrongly decided by the Arthrex panel because APJ’s were not “superior officers” (requiring Senate confirmation).  Arthrex and the government argued that the Director of the USPTO has sufficient control over the PTAB judges, pointing out that the Director can assign APJs to particular matters, remove them from cases, and over-rule institution decisions by issuing sua sponte dismissals.  Arthrex’s en banc rehearing petition, on the other hand, argued that the decision didn’t go far enough and the proper remedy should have been to throw out all decisions rendered in AIA trials so far.  A decision on the en banc rehearing request is unlikely to made until February 2020. If the rehearing petition is granted, an actual en banc decision may not come until 2021.

Another noteworthy Federal Circuit decision came in June, 2019 in Regents of University of Minnesota v. LSI Corporation, No. 18-1559 (Fed. Cir. 2019), where the Federal Circuit made it clear that sovereign immunity does not apply to patent challenges brought pursuant to the 2011 America Invents Act (AIA), regardless of whether the immunity claim is raised by a Native American tribe or a state university trying to avoid patent adjudication. Continue reading →

PTAB’S “PRECEDENTIAL OPINION PANEL” RULES ON TIME-BAR TRIGGER

By Tom Engellenner
The “Precedential Opinion Panel” of the Patent Trial and Appeal Board (PTAB) ruled earlier this month that even a faulty complaint asserting patent infringement can start the clock running on a petitioner’s one-year time period for administratively challenging the validity of the patent under the America Invents Act (AIA).  See, GoPro, Inc. v. 360Heros, Inc., Case IPR2018-01754 POP decision.  According to the precedential panel:

“The service of a pleading asserting a claim alleging infringement, including where the serving party lacks standing to sue or the pleading is otherwise deficient, triggers the one-year time period for a petitioner to file a petition.” Continue reading →