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.
The procedures by which the Patent Trial and Appeal Board (PTAB) has routinely conducted inter partes reviews (IPRs) have been dealt another blow. On March 18, the Federal Circuit ruled that the clear and unambiguous language of the governing statute—35 USC Section 315(c)—does not authorize the Board to “join” an entity to an IPR proceeding in which it is already a party (“same-party joinder”) or to “join” new issues “material to patentability, such as new claims or new grounds” to an existing IPR. The decision arose after Windy City Innovations, LLC appealed to the Federal Circuit a set of final written decisions in six IPRs triggered by Facebook against four patents that Windy City had asserted against it in district court litigation. That case is also on appeal after District Judge Yvonne Gonzalez Rogers invalidated the surviving claims from one of the same four patents under Alice, but the Federal Circuit’s decision may breathe new life into Windy City’s litigation—and is likely to bring sweeping changes to the manner in which the PTAB adjudicates IPRs.