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Facebook Foiled in Second Attempt to Join Own Patent Case (1)

Sept. 4, 2020, 4:03 PMUpdated: Sept. 4, 2020, 8:13 PM

Facebook Inc. couldn’t join Patent Trial and Appeal Board proceedings in which it was already involved, or add issues that otherwise would have been time-barred, the Federal Circuit underscored in a modified opinion.

The U.S. Court of Appeals for the Federal Circuit held in March that the Patent Act “does not authorize same-party joinder, and also does not authorize joinder of new issues, including issues that would otherwise be time-barred.”

Facebook asked the three-judge panel that issued the original decision or the full Federal Circuit to review the ruling, arguing that the recent U.S. Supreme Court’s decision in Thryv Inc. v. Click-To-Call Technologies means the Federal Circuit can’t second-guess the patent office.

Facebook can’t join itself to a proceeding in which it was already a party and can’t add new claims, the panel said again in its modified opinion Friday. The full court declined to consider the case.

The new opinion vacated the board’s decisions on those claims, but found under Thryv it lacks the authority to review the board’s institution of two late-filed petitions. Thryv held the Federal Circuit can’t review PTAB time-bar determinations.

“The Federal Circuit is really parsing things carefully when it comes to looking at institution decisions post-Thryv,” Ropes & Gray LLP partner Matt Rizzolo said.

Back to the Board

The case involves an appeal of the PTAB’s decision to allow Facebook to file follow-on petitions to join patent validity proceedings against Windy City Innovations LLC in which the social media giant was already a party.

Facebook’s new petitions also challenged additional patent claims that Windy City said it would assert in litigation against Facebook months after Windy City was asked to identify them.

The Federal Circuit panel stuck by its original holding barring the use of self-joinder as a way to get around the one-year time-bar for filing an IPR.

It again vacated the PTAB’s decision allowing Facebook to add the new claims. But this time the Federal Circuit sent the case back to give the PTAB a chance to decide if those claims are resolved.

Allowing a party to join an ongoing IPR is a two-decision process for the board. The first decision is whether to institute a validity trial, which the Federal Circuit said they “may not review” for both merits and timeliness.

But the joinder decision “is a separate and subsequent decision” from institution, the Federal Circuit said. Nothing “overcomes the strong presumption that we have jurisdiction to review that joinder decision,” it said.

The decision is unlikely to change anything for Facebook, unless it seeks Supreme Court review, Rizzolo said. “If a joinder request is denied and that was your sole basis for getting around the time-bar issue then you’re going to have your petition dismissed,” he said.

The panel included the same “additional views” opinion, saying there was “no indication” that Congress intended to delegate authority to the patent office director, Andrei Iancu, to interpret statutes via the agency’s Precedential Opinion Panel. Iancu sits on the panel.

Chief Judge Sharon Prost wrote the opinion, joined by Judges S. Jay Plager and Kathleen M. O’Malley.

Cooley LLP represented Facebook. Brown Rudnick LLP represented Windy City.

The case is Facebook Inc. v. Windy City Innovations LLC, Fed. Cir., No. 18-1400, modified opinion 9/4/20.

(Updated with additional reporting throughout.)

To contact the reporters on this story: Perry Cooper in Washington at; Ian Lopez in Washington at

To contact the editors responsible for this story: Renee Schoof at; Keith Perine at

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