953 F.3d 1313
Fed. Cir.2020Background
- Windy City sued Facebook (June 2015) for infringement of four related patents ('245, '657, '552, '356) without identifying specific asserted claims; Facebook was served June 3, 2015.
- Facebook filed timely IPR petitions (June 3, 2016) challenging subsets of claims; the PTO’s PTAB instituted those IPRs.
- After Windy City identified asserted claims (Oct. 19, 2016), Facebook filed additional petitions challenging newly asserted claims but these would have been time-barred under 35 U.S.C. § 315(b); Facebook moved to join those new petitions to the instituted IPRs under § 315(c).
- The Board granted joinder and considered the new claims; final written decisions found some challenged claims obvious and others not. Two APJs issued concurrences expressing concern about "same-party" joinder.
- On appeal the Federal Circuit held § 315(c) unambiguous: it does not authorize joining a person to a proceeding in which it already is a party (same-party joinder) nor does it permit introducing new/time‑barred issues via joinder; accordingly some PTAB decisions were vacated and others affirmed on the merits.
Issues
| Issue | Plaintiff's Argument (Windy City) | Defendant's Argument (Facebook) | Held |
|---|---|---|---|
| Whether § 315(c) authorizes same‑party joinder (joining a petitioner to an IPR in which it already is a party) | § 315(c) does not permit joining a person who is already a party | § 315(c) permits such joinder; textual use of “any person” is expansive and the Board can effectuate it | Court: § 315(c) unambiguous — does not authorize same‑party joinder; Board erred |
| Whether § 315(c) permits joinder of new issues (e.g., time‑barred claims) into an instituted IPR | Joinder authorizes adding a person as a party only; it does not allow importation of new issues or otherwise time‑barred claims | Statute is silent as to prohibition; policy supports allowing joinder of new issues to avoid gamesmanship by patent owners | Court: § 315(c) does not authorize joinder of new/time‑barred issues; Board’s additions of such claims vacated |
| Whether the Board’s obviousness findings (various claims of the ’245, ’657, ’552, ’356 patents) were supported by substantial evidence | Challenges the Board’s motivation‑to‑combine and hindsight concerns for combinations (e.g., Roseman + Rissanen) | Prior art taught the claimed features; expert testimony supported motivation to combine and predictable selection (databases, keys, etc.) | Court: substantial evidence supports many of the Board’s obviousness findings; affirmed‑in‑part and vacated‑in‑part consistent with joinder rulings (e.g., '245 claims 1–15,17,18 affirmed; certain joinder‑added claims vacated) |
| Claim construction dispute re: the “authorization” limitation in the ’552 patent (does a stored "key" that grants access also authorize actions within the room?) | The patent requires stored authorization that controls in‑room actions (sending multimedia) — Roseman’s key only grants admission, not per‑action permissions | Roseman’s key suffices to show control/authorization | Court: adopts Board’s construction — Roseman’s keys only grant admission; keys do not show stored per‑action authorization; Board’s nonobviousness determination on those claims affirmed |
Key Cases Cited
- SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) (the petitioner’s petition, not the Director’s discretion, defines the scope of an instituted IPR)
- Chevron U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837 (1984) (framework for judicial deference to agency statutory interpretations)
- Mead v. United States, 533 U.S. 218 (2001) (limits Chevron deference absent clear congressional delegation and formal procedures)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness standard; person of ordinary skill has ordinary creativity)
- Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (2011) (common‑law terms in statutes carry ordinary legal meanings)
- Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (agency interpretations deriving deference must arise from delegated rulemaking authority)
- Click‑To‑Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (discussing § 315(b) time‑bar and joinder exception)
- In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) (appellate court will not reweigh PTAB fact‑finding; review for substantial evidence)