May 2020

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.

Supreme Court on Generic Functionality for Website Designs.

USPTO v. B.V., Docket No. 19-46 (Supreme Court 2020)

Oral arguments are set in this trademark case for May 4, 2020 [Listen Live at 9:00 am EST]. is seeking to register rights on their eponymous service BOOKING.COM. The basic question is whether the addition of “dot com” to a generic term can result in a protectable trademark.

The company’s actually uses the word “booking” in its typical generic form: “The World’s #1 Choice for Booking Accommodations.”  However, the company presented factual (survey) evidence that the addition of dot-com transforms the term in the eyes of consumers. Still, the PTO refused to register the trademark — holding that the “.com” addition is never enough.  The PTO’s approach here relates back to the 1888 decision in Goodyear Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888).  At the time “Goodyear rubber” was seen as a generic term for a type of vulcanized rubber, and the Supreme Court held that adding the term “Company” would not change the matter — even if used for 20+ years with public understanding.

[T]he name of “Goodyear Rubber Company” is not one capable of exclusive appropriation. “Goodyear Rubber” are terms descriptive of well-known classes of goods produced by the process known as Goodyear’s invention. Names which are thus descriptive of a class of goods cannot be exclusively appropriated by any one. The addition of the word “Company” only indicates that parties have formed an association or partnership to deal in such goods, either to produce or to sell them. Thus parties united to produce or sell wine, or to raise cotton or grain, might style themselves Wine Company, Cotton Company, or Grain Company; but by such description they would in no respect impair the equal right of others engaged in similar business to use similar designations, for the obvious reason that all persons have a right to deal in such articles, and to publish the fact to the world. Names of such articles cannot be adopted as trade-marks, and be thereby appropriated to the exclusive right of any one; nor will the incorporation of a company in the name of an article of commerce, without other specification, create any exclusive right to the use of the name.

Id.   Goodyear Co. was later followed by cases.  See, In re Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir. 2004) ( not registrable). However, in Oppedahl, the Federal Circuit noted that there is no “rule that always disregards the use of ‘.com’.” Id. This sets up the question as presented by the U.S. Gov’t seeking to bar registration of the mark:

Whether, when the Lanham Act states generic terms may not be registered as trademarks, the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark?

My question in the case is whether the operation of the internet has changed so substantially in the past 20 years so as to require a rethinking.  These days, almost no one types “.com” into their browser window but instead that portion is filled-in automatically.  Likewise, many people (like myself) primarily use Booking.Com via an app rather than a web browser (image below).  In the App setup, “.com” is merely a moniker and offers no direct functionality.

I had expected TLD’s to have lost all of their functionality by now — being eclipsed by other technology. They have continued to hold on, but I still expect that their supremacy (if it still exists) will only be for another decade or less.  Hopefully, the Supreme Court will recognize that its decision here need not assume that our current approach is locked-in-stone.

Can you Select England as the Forum for US Patent Litigation?

In re Fortinet (Fed. Cir. 2020)

British Telecom (BT) and Fortinet have a written agreement associated with their global commercial relationship that establishes the courts of England as the “exclusive jurisdiction” for resolving both “contractual and/or non-contractual obligations” between the parties.  Despite that agreement, BT sued Fortinet in U.S. Federal Court (D.Del.) alleging infringement of its U.S. patent.

The district court refused to dismiss the case on forum-non-conveniens — holding that it was not clear that BT would have an alternative forum.  In particular, it is not clear that an English court would entertain allegations of infringement of a U.S. patent that occurred U.S. soil.

I need not resolve whether Plaintiffs’ claims are covered by the Frame Agreement because Fortinet has failed to demonstrate that an English court would have jurisdiction over Plaintiffs’ patent claims.

British Telecomm. PLC v. Fortinet Inc., 424 F. Supp. 3d 362, 369 (D. Del. 2019) (District Court Decision).

Denial of a motion-to-dismiss is interlocutory and thus not immediately appealable as a right. Still, Fortinet petitioner for writ of mandamus from the Federal Circuit.  However, that court has now denied the petition.  The court’s basic conclusion is that Fortinet has not the high standard required for mandamus: “it simply is not indisputably clear that Fortinet has established a right to dismissal under the doctrine of forum-non-conveniens.”

The leading precedent in Fortinet’s favor is Atlantic Marine Construction Co. v. United States District Court for Western District of Texas, 571 U.S. 49 (2013). In Atlantic Marine, the Supreme Court explained that “a valid forum-selection clause should be given controlling weight in all but the most exceptional cases.”  A major difference here is that this involves a request to move litigation to a foreign venue while Atlantic Marine involved transfer between U.S. districts courts that both had proper subject matter jurisdiction.  As such, the Supreme Court in Atlantic Marine did not consider “whether courts are precluded from considering the availability of
the alternative forum in the course of conducting its forum non conveniens doctrine analysis.”