Facebook v. Windy City; Facebook loses on joinder issues

The outcome:



For the reasons explained below, we hold that the
Board erred in allowing Facebook to join itself to a
proceeding in which it was already a party, and also erred
in allowing Facebook to add new claims to the IPRs through
that joinder.

We also hold that the Board’s obviousness determinations on the originally
instituted claims are supported by substantial evidence. We therefore affirm-inpart and vacate-in-part the Board’s final written decisions
on the ’245 and ’657 patents, affirm the Board’s final written decision on the ’552 patent, and affirm-in-part the
Board’s final written decision on the ’356 patent. We dismiss as moot Facebook’s appeal of the Board’s final written
decision on the ’356 patent with respect to claims 14 and
33.



The issue on joinder:



Windy City argues that § 315(c) does not authorize
same-party joinder and also that it does not authorize
joinder of new issues material to patentability, such as new
claims or new grounds.


The CAFC noted:


As described above, the plain language of § 315(c) allows the Director “to join as a party [to an already instituted IPR] any person” who meets certain requirements.
35 U.S.C. § 315 (emphases added). When the Board instituted Facebook’s later petitions and granted its joinder motions, however, the Board did not purport to be joining
anyone as a party. Rather, the Board understood Facebook
to be requesting that its later proceedings be joined to its
earlier proceedings. J.A. 8163 (“Facebook filed a Motion for
Joinder . . . requesting that this proceeding by joined with
[its prior IPR]”). It granted this request accordingly.
J.A. 8172 (“Further Ordered that IPR2017-00709 is hereby
joined with IPR2016-01156”). In other words, an essential
premise of the Board’s decision was that § 315(c) authorizes
two proceedings to be joined, rather than joining a person
as a party to an existing proceeding.

That understanding of § 315(c) is contrary to the plain
language of the provision.