Windy City IPR: Are Joinder Decisions Appealable after Thryv?

by Dennis Crouch

In Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313 (Fed. Cir. 2020), the Federal Circuit held that the PTAB had improperly allowed Facebook to self-join to its own already-granted inter partes review (IPR) proceeding.  Prof. Vishnubhakat explained:

The panel held that § 315(c) does not authorize same-party joinder, i.e., does not allow a petitioner who has filed an inter partes review petition to join its own, earlier inter partes review petition. The panel also held that § 315(c) does not authorize issue joinder, i.e., does not allow joinder that would introduce new issues material to patentability, such as new patent claims or new grounds for cancellation.

Saurabh Vishnubhakat, Joinder and the One-Year Time Bar in Inter Partes Review, Patently-O (March 20, 2020).  Facebook had wanted to join its prior case, because its later-filed case would have otherwise been time-barred under § 315(b)(1-year post-service timeline does “not apply to a request for joinder”).

Facebook v. Windy City was decided one month before the Supreme Court issued its opinion in Thryv, Inc v. Click-To-Call Techs., LP, 18-916, 2020 WL 1906544 (U.S. Apr. 20, 2020).  In Thryv, the court held that the USPTO’s interpretation of the § 315(b) one-year time-bar was not reviewable on appeal based upon the “no appeal” provision of § 314(d).

(d) No Appeal.— The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.

35 U.S.C. § 314(d). Thryv further found that the no-appeal provision bars a party from using its appeal from a final written decision to overturn an institution-stage decision.

[NOTE – in an upcoming IPO Webinar,
I’ll be addressing the overlay between
Thryv and Windy City on a panel along
with Greg Castanias (Jones Day) and
Scott McKeown (Ropes & Gray).]

Federal Circuit Call for Briefing: Following Thryv, the Federal Circuit has now called for additional briefing in Windy City — asking the parties (as well as the USPTO) to address “the effect, if any, of the Supreme Court’s decision in Thryv on our decision in this case.” (10 day June 10 deadline – extension granted).

In her letter to the court, Facebook’s attorney Heidi Keefe argues that “Thryv confirms that Section 314(d) bars review of the PTO’s Section 315(c) institution and joinder decisions.”

Windy City’s claim that joinder was improper amounts to an argument that the PTO “should have refused ‘to institute an inter partes review’” of Facebook’s follow-on petitions and Thryv makes clear that Section 314(d) precludes review of that claim.

ltr.Keefe.  I expect that Keefe is correct in her conclusions — that the joinder question here was effectively an institution question and thus barred from being appealed.  However, Thryv does not expressly decide the issue — giving the Federal Circuit some amount of textualist wiggle room.  The outcome in this case will likely let us know whether the Federal Circuit will give Thryv its full weight or instead attempt to cabin-in the decision.

13 thoughts on “Windy City IPR: Are Joinder Decisions Appealable after Thryv?

  1. 4

    If the Supreme Court has said that it’s ok to review the Director’s decision whether an entity is a “person” who can file a petition (as in Return Mail), I could see the Federal Circuit deciding that it’s likewise ok to review the Director’s decision to join as a “party” a certain person who has filed a petition.

    1. 4.1

      That seems right Matt. The problem is that the no-appeal provision was not raised in Return Mail, nor was it discussed by the Court.

      1. 4.1.1

        Is it a problem?

        Perhaps the reflection that it was not raised merely defeats the presumption advanced — and the conclusion @SSumed — that different legal concepts must necessarily be subsumed into an original initiation decision.

        As noted below at post 1, Joinder and Initiation are two distinct and separate legal concepts.

        Keefe not only overlooks this, but counts on the implication (and asserted conclusion) that the two are not distinct in order to piggyback on the “cannot challenge” ruling.

        I do hope that people see through this.

        1. 4.1.1.1

          The petitions were clearly outside the 1-year deadline, as the Petitioner admitted. (See IPR2017-00659, Paper 2 at 1). There was no plausible basis to initiate other than the joinder exception. (See id.). In my view, the PTO would not have initiated the IPRs but for the fact that the petitioner had requested joinder.

          This case is therefore unlike Thryv, where the initiation decision had some plausible basis on its own.

          1. 4.1.1.1.1

            Would be interesting for the Federal Circuit to vacate the joinder decision, but decide that it can’t review the institution of the 2nd IPR itself, so it remands to the PTAB to decide what to do about the 2nd IPR. Seems likely in that situation for the PTAB to reconsider the institution decision and dismiss the proceeding as barred, but who knows…

            1. 4.1.1.1.1.1

              Matt,

              What would your view be in response to my noting that your comment of:

              vacate the joinder decision, but decide that it can’t review the institution of the 2nd IPR itself,

              means that the ‘institution of the 2nd IPR itself’ was a NON-institution (because, rather than its own institution, what you are vacating was employed).

              In other words, joinder is vacated AND non-institution is maintained, because the actual decision was to NOY institute a 2nd IPR.

              On that basis, there is NO mechanism for a ‘do-over’ on the non-institution of the 2nd IPR and I do not see HOW the “likely for the PTAB to reconsider” even could be reached.

        2. 4.1.1.2

          Also, it’s not clear what you mean in Post 1 that “there was already a separate institution decision.”

          In the Institution Decision, the PTAB first determined that joinder was appropriate. (See IPR2017-00659, Paper 11 at 5). Only after deciding the joinder issue did the Board determine that the petitioner had shown a reasonable likelihood that it would prevail. (See IPR2017-00659, Paper 11 at 13).

          1. 4.1.1.2.1

            For clarity: Joinder is a separate legal concept than the institution decision itself.

          2. 4.1.1.2.2

            Pilgrim, are you saying that the PTAB here never decided if the original [timely] IPR petition itself met the threshold test for instituting an IPR? Did the PTAB rely on the relevance of prior art provided only by the joinder-requester after the one year bar for its institution decision? Should not either of those justify a remand here?

  2. 3

    For anyone interested, the Fed. Cir. just issued another order such that “the parties’ supplemental briefs, the Director’s supplemental brief, and any briefs and motions by amici curiae are due no later than 06/10/2020.”

  3. 2

    315(c): “Joinder- If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.”
    While the 315(b) time bar is excluded for (c), joinder is for After an IPR institution is already declared [necessarily against the same patent]. But there is the in the “discretion” of the “Director” provision.
    But isn’t the statutory interpretation of “join as a party” and “any person” the stumbling block here? Does that language so clearly exclude a person who would join as the SAME party?

    1. 2.1

      Are you moving to a different area of deference? You appear to agree with me vis a vis this not falling to the attempted sweep into the “no appeal” initiation decision point…

  4. 1

    Not sure that I can agree — there was already a separate institution decision.

    To give full credit to Keefe, that institution decision must be be deemed “non-final” even after it occurs and goes into effect.

    Joinder is a separate legal concept than the institution decision itself.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture