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Case Law Meeting - Facebook v. Windy City
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When: Friday, May 29, 2020
Where: Zoom Meeting
Boston, Massachusetts 
United States
Contact: Case Law Committee

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Date and Time: May 29, 2020, 12:00 pm

Location: Video conference – Call-in instructions to follow

Case presenter / moderator: Michelle Nyein, Wolf Greenfield




Facebook, Inc. v. Windy City Innovations, LLC


Please join us for a discussion of Facebook v. Windy City, which addresses a number of interesting issues, including joinder in IPRs, statutory interpretation, and the amount of deference owed to the opinions of the Precedential Opinion Panel (“POP”) of the Patent and Trial Appeal Board (“PTAB”).    


In this case, the Federal Circuit held that 35 U.S.C. § 315(c) does not authorize either: (1) same-party joinder or (2) joinder of new issues.  Specifically, the court found that the PTAB erred in allowing Facebook to join 2 IPR petitions to its earlier-filed IPR petitions.  Facebook had moved for joinder to circumvent the one-year time bar – Windy City had asserted 4 patents against Facebook in a district court case but only identified the claims it was asserting more than 1 year after serving its complaint.  When Windy City asserted some claims that were not included in Facebook’s original IPR petitions (because the 4 asserted patents had 830 claims), Facebook filed 2 additional IPR petitions and sought to join them to the earlier-filed petitions.  The Board granted Facebook’s motions for joinder because the new claims would not significantly disrupt the trial schedule, briefing or discovery.  The Federal Circuit found that the Board’s joinder decisions were improper under § 315(c).   


Significantly, the Federal Circuit’s conclusion regarding § 315(c) was contrary to that of the POP in Proppant Express Investments, LLC v. Oren Techs., LLC, No. IPR2018-00914, Paper 38 (P.T.A.B. Mar. 13, 2019).  In Proppant, the POP found that § 315(c) authorized same-party joinder because the phrase “any person” in § 315(c) encompasses “every person who properly files a petition that warrants institution,” including oneself.  The Federal Circuit disagreed given the context of the phrase, arguing that a statute saying that “a person may marry any person who is older than 16” would not permit marriage to oneself.  The court additionally found that § 315(c) unambiguously does not permit a joined party to introduce new issues into an existing proceeding.   


In its opinion, the Federal Circuit concluded that the POP’s interpretation of § 315(c) in Proppant was not entitled to Chevron deference because the language of § 315(c) is clear and unambiguous.  In an “Additional Views” section joined by all three judges on the panel, the court further concluded that even if the statutory language were ambiguous, it would reach the same conclusion because the POP’s rulings on statutory interpretation and other pure issues of law are not entitled to Chevron or Skidmore deference.  In reaching this conclusion, the court cited the limited nature of the authority delegated to the USPTO Director and rejected the argument that the POP’s procedures were comparable to those for notice-and-comment rulemaking.      


               Among the issues that will be discussed are:


  1. In light of this decision, how much weight should be given to POP opinions interpreting AIA provisions?  Does it seem likely that the Federal Circuit would give Skidmore deference to a POP opinion under a different set of facts?   
  2. What are the options for defendants in district court litigation when there are still significant outstanding questions (e.g., regarding identification of asserted claims) a year after the complaint was served?


Please review at least the Federal Circuit opinion.  A link to the Federal Circuit opinion can be found here: Facebook v. Windy City Opinion


Case Law Committee Co-Chairs:

James Lampert, WilmerHale, Retired

Yvonne Lee, WilmerHale
Michelle Nyein, Wolf Greenfield

N. Scott Pierce, Foley Hoag LLP

David Thibodeau, VLP Law Group

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