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.
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.