- Jason W. Rhodes
Despite Thryv, Federal Circuit Does Not Defer to PTO’s Interpretation of 35 USC § 315(c), reversing PTAB decision to allow self-party joinder and add new claims to IPR. Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir. 2020).
Windy City filed a district court complaint accusing Facebook of infringing several patents, but did not identify the claims being asserted more than a year after filing the complaint. Facebook had timely petitioned for inter partes review (IPR) of several claims from those patents. After Windy City identified the asserted claims (and the one-year time bar of § 315(c) had passed), Facebook filed two additional petitions for IPR of additional claims of the patents, along with motions for joinder to the already-instituted IPRs of those patents. Although the § 315(c) time bar had passed, the PTAB instituted Facebook’s two new IPRs, granted Facebook’s motions for joinder, and terminated the proceedings. In a March 18, 2020 opinion, the Federal Circuit ruled that the PTAB erred in allowing Facebook to join a proceeding to which it was already a party, and also erred in allowing Facebook to add new claims to the IPRs through that joinder. On September 4, 2020, after the Thryv decision by the Supreme Court, the Federal Circuit modified and reissued its opinion, confirming its previous conclusions regarding the new claims improperly added to the IPRs, but remanded to the PTAB to consider whether the termination of the later-filed IPR petitions finally resolved those proceedings.