Federal Circuit Overturns PTAB Precedential Order That Allows Parties to Join Their Own IPR

Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313 (Fed. Cir. Mar. 18, 2020)

In March 2019, the Patent Trial and Appeal Board (PTAB) issued a precedential order in Proppant Express Investments, LLC v. Oren Technologies, LLC, holding that 35 U.S.C. § 315(c) permits joinder of a same party or new issues to an existing inter partes review (IPR). This holding was used by petitioners to add new patentability challenges to earlier-filed IPRs, even after the one-year time bar for filing IPRs. 

In Facebook, the Federal Circuit considered whether the PTAB petitioner/appellant should have been allowed to join additional IPR petitions identifying new claims to instituted IPRs after the one-year time bar of 35 U.S.C. § 315(b) had passed. 

The patent owner/appellee argued that joinder was improper because § 315(c) does not authorize same-party joinder and does not authorize joinder of new issues. The Federal Circuit agreed on both points. As to same-party joinder, the Federal Circuit reasoned that the language of § 315(c) is intended to give the PTAB authority to join other parties to a petition, rather than the same party: “It would be an extraordinary usage of the term 'join as a party' to refer to persons who were already parties.” As to joinder of new issues, the Federal Circuit reasoned that § 315(c) is directed to permitting a party to join an already-instituted IPR, which “is confined to the claims and grounds challenged in that petition.” Thus, § 315(c) does not authorize a joined party to bring new issues from a newer proceeding into an existing proceeding.

A copy of the opinion can be found here.