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.