In March 2020, the Federal Circuit ruled in Facebook v. Windy City Innovations that the Patent Trial and Appeal Board (PTAB) may not “join” an entity to another inter partes review (IPR) proceeding in which it is already a party (i.e., “same-party joinder”) or “join” new issues “material to patentability, such as new claims or new grounds” to an existing IPR (“issue joinder”). However, in May, the court ordered the parties and the US government (in its capacity as an amicus) to file briefs addressing the impact of the US Supreme Court’s intervening decision in Thryv v. Click-to-Call, which held that decisions applying the one-year statutory time bar (which, in part, imposes a one-year window to file an IPR for district court defendants) may not be appealed. All three briefs have now been filed, with Facebook and the USPTO both arguing that joinder decisions fall under the Supreme Court’s Cuozzo Speed Technologies v. Lee decision, thereby insulating them from review—the same rationale used by the Supreme Court in Click-to-Call.
