News & Events

March 23, 2020

Federal Circuit Says PTAB Joinder Rules Contrary to Law

banner-alerts

Federal Circuit Says PTAB Joinder Rules Contrary to Law

March 23, 2020

Authors: Dorothy Whelan and Rob Courtney

The Federal Circuit has ruled in Facebook, Inc. v. Windy City Innovations, LLC that the Patent Trial and Appeal Board’s (PTAB) practice of permitting petitioners to join themselves as parties to existing reviews and adding new issues by joining new petitions to earlier ones is contrary to the America Invents Act (AIA).

Windy City filed a patent infringement suit against Facebook, to which Facebook responded by filing inter partes review (IPR) petitions challenging several claims in the patents at issue. At that time, Windy City had not yet identified the specific claims it was asserting in the district court proceeding. The PTAB then instituted IPR proceedings of each patent. After Windy City identified the claims it was asserting in district court, Facebook filed two additional IPR petitions, along with motions for joinder on the already instituted IPRs. By the time of the second filing, however, the one-year time bar of § 315(b) had passed. Nonetheless, the PTAB instituted the new IPRs and granted Facebook’s motions for joinder.

The Federal Circuit held that “the clear and unambiguous text of [the AIA] does not authorize joinder of two proceedings, and does not authorize the Director [of the U.S. Patent and Trademark Office] to join a person to a proceeding in which that person is already a party.” While the AIA grants the Director discretion to join “any person” as a party to an instituted review, the court found that that discretion does not extend to a party joining itself. “It would be an extraordinary usage of the term ‘join as a party’ to refer to persons who were already parties,” the court stated. The court also found that nothing in the AIA permits joinder of petitions to add new issues, because an IPR that is instituted “is governed by its own petition and confined to the claims and grounds challenged in that petition.” The AIA allows the Director discretion to join a person as a party to an already instituted IPR but does not permit the joined party to bring new issues from the newer proceeding into the existing proceeding.

In a section titled “additional views,” the court also considered whether the PTAB Precedential Opinion Panel (POP) is entitled to Chevron deference, as the POP had originally ruled that parties could join themselves and add new issues to existing IPRs. Chevron deference applies to agencies to which Congress has given the authority to interpret the law and make rules that carry the force of law. The court found that the PTAB is therefore not entitled to Chevron deference, as it found that “notably absent from the AIA, accordingly, is any congressional authorization, for either the Director or the Board, to undertake statutory interpretation through POP opinions.” While this finding was not part of the opinion, it likely will prove influential on any subsequent panel that may consider this issue.

For more information regarding joinder of parties and issues in PTAB proceedings, please contact your Fish attorney or email us at info@fr.com.


The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.

< Back to Alerts

No Comments

Sorry, the comment form is closed at this time.

Fill out the form below to receive our monthly newsletter and updates on your selected areas of interest. You can unsubscribe at any time by clicking the unsubscribe link at the bottom of the email.

  • Fish & Richardson P.C. is committed to protecting and respecting your privacy, and we’ll only use your personal information to administer your account and to provide the services you requested from us. From time to time, we would like to contact you about our services, as well as other content that may be of interest to you. If you consent to us contacting you for this purpose, please tick below.
  • In order to provide you the content requested, we need to store and process your personal data. If you consent to us storing your personal data for this purpose, please tick the checkbox below.
  • You can unsubscribe from these communications at any time. This can be done by clicking the unsubscribe link at the bottom of marketing emails you receive from us, or by emailing info@fr.com stating that you would like to be unsubscribed.
  • This field is for validation purposes and should be left unchanged.