No Same-Party or New Issue Joinder for IPRs at the PTAB

In Facebook, Inc. v. Windy City Innovations, LLC, No. 2018-1400 (Fed. Cir. Mar. 18, 2020) the Federal Circuit found that the text of 35 U.S.C. § 315(c) does not authorize same-party or new issue joinder to an existing IPR. 

Windy City filed suit against Facebook alleging infringement of several of its patents.  Facebook timely filed IPR petitions challenging certain claims of each of the asserted patents.  More than one year after service of the complaint Facebook filed new IPR petitions challenging additional claims from the same patents, along with motions for joinder to the original IPRs.  The Board instituted Facebook’s IPRs and granted the motions for joinder.  After the Board issued its final written decision finding some challenged claims obvious, Windy City appealed the Board’s decisions.

Under 35 U.S.C. § 315(c), the Director may, in his or her discretion, join any person to an IPR upon petition.  On appeal, Windy City argued that joinder was not proper because 35 U.S.C. § 315(c) does not permit same-party joinder or joinder of new claims or new grounds.  Facebook argued that joinder was proper because “any person” could be interpreted to broadly include joining the same party and that new issue joinder permits efficiency.  The Federal Circuit sided with Windy City, finding that the language of § 315(c) is clearly and unambiguously does not authorize same-party or new issue joinder.  For more detailed analysis of this case and its impact on post-grant proceedings, please see The Impact of the Federal Circuit’s Decision in Facebook v. Windy City on PTAB Practice: No Same Party or Issue Joinder and No Deference to POP Decisions on Statutory Interpretation on Finnegan’s AIA Blog.