September 8, 2020 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (August 31-September 4): Same-Party Joinder Still Not Thryv-ing

Last week was September Court week, marking the unofficial end of summer for Federal Circuit practitioners. The Court issued a total of 25 decisions, including 8 Rule 36 summary affirmances in cases argued last week, as well as some opinions in September submitted cases and older cases. As you’ll recall, the Court submitted fewer cases on the briefs this session, which probably led to the higher number of Rule 36s. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 6

Non-precedential opinions: 11

Rule 36: 8 (all in argued cases)

Longest pending case from argument: Facebook, Inc. v. Windy City Innovations, LLC, No. 18-1400 (394 days) (opinion modified after petition for rehearing)

Shortest pending case from argument (non-Rule 36): Google LLC v. Blackberry Ltd., No. 19-1568 (30 days)

Case of the week: Facebook, Inc. v. Windy City Innovations, LLC, No. 18-1400 (issued Mar. 18, 2020; modified Sept. 4, 2020)

Panel: Chief Judge Prost and Judges Plager and O’Malley, with Chief Judge Prost writing the opinion, and all three judges together filing “additional views.”

You should read this case if: You have a matter involving an IPR joinder issue.

As we mentioned in our previous post, the Federal Circuit has been responding to the Supreme Court’s recent decision in Thryv, Inc. v. Click-to-Call Technologies, LP. That case held that the Patent Trial and Appeal Board’s determinations about whether an IPR petition is time-barred are not subject to judicial review. In our case of the week, the Federal Circuit modified a pre-Thryv opinion to explain that Thryv did not deprive it of jurisdiction to review the IPR joinder decision it had addressed.

A brief statutory overview: 35 U.S.C. § 315(b) provides that an IPR may not be instituted if the petition is filed more than 1 year after the petitioner is served with a complaint alleging infringement of the challenged patent. But it specifies that this time limitation “shall not apply to a request for joinder under subsection (c).” Section 315(c), in turn, provides that after an IPR has been instituted, the Director (or the Board, to whom the Director has delegated authority), “in his or her discretion, may join as a party to that [IPR] any person who properly files a petition . . . that the Director . . . determines warrants the institution of an” IPR. And § 314(d) provides that “[t]he determination by the Director whether to institute an [IPR] under this section shall be final and nonappealable.”

Next, a brief recap for readers who missed the earlier iteration of the decision: the plaintiff sued for patent infringement, but before the one-year deadline to file an IPR neared, the plaintiff had not yet specified which claims it was asserting. On the last day of the one-year window, the defendant filed IPR petitions challenging some (but not all) claims of the asserted patents, which the Board instituted. Several months later, the plaintiff identified its asserted claims. The defendant then filed two more IPR petitions challenging additional claims and asked the Board to join those proceedings to the already-instituted IPRs under § 315(c). The Board agreed, citing a precedential Board opinion interpreting § 315(c) to permit same-party joinder, and added the newly challenged claims to the existing proceedings. The Board eventually held some challenged claims unpatentable but upheld other claims. As relevant here, the plaintiff cross-appealed the Board’s joinder decision.

The Court began with the “threshold issue” on which the defendant had sought rehearing and the Court had requested supplemental briefing after Thryv: whether it had jurisdiction to review the Board’s joinder decision. Answer: yes. The Court summarized Thryv as holding that decisions “closely related to” the Board’s “decision whether to institute” an IPR are nonappealable under § 314(d), but that decisions about “the manner in which the agency’s review proceeds once instituted” fall outside § 314(d)’s review bar.

The Court went on to explain that joinder under § 315(c) requires “two different decisions.” First, the Director must determine whether the joinder applicant’s IPR petition “warrants” institution under § 314. The Court explained that § 314(d) bars review of this first decision, whether for timeliness or for the petitioner’s likelihood of success on the merits. Second, the Director must exercise his discretion to decide whether to “join as a party” the joinder applicant. This determination, the Court reasoned, is a “separate and subsequent decision” to the institution decision; it affects how an already-instituted IPR proceeds rather than the institution of an IPR. Thus, § 314(d) does not bar review of this second decision. Since the cross-appeal challenged whether the Board exceeded its statutory authority in making this latter, reviewable decision, the Court concluded that it had jurisdiction.

The rest of the reissued opinion reiterated the Court’s pre-Thryv decision. The Court held that § 315(c) does not authorize joinder of a person to a proceeding in which that person is already a party. It primarily relied on § 315(c)’s text, which permits the Director to “join as a party to [an IPR] any person who” meets certain threshold requirements. The Court reasoned that the phrase “join as a party” could not be read as referring to persons who were already parties to the proceeding.

The Court also held that § 315(c) does not permit joinder of new issues, such as new claims or new grounds. The Court noted that § 315(c) by its terms only authorizes joinder of a person “as a party” to an already instituted IPR, and the existing IPR “is governed by its own petition and is confined to the claims and grounds challenged in that petition.” Thus, the Court explained, § 315(c) “does not permit the joined party, by virtue of the joinder decision alone, to bring new issues from a second proceeding into the existing proceeding.” The Court also pointed out that § 315(d) specifically contemplates “consolidation” of two proceedings. It reasoned that “[c]onstruing § 315(c) to permit joinder of proceedings, and all the new issues therein, would render superfluous the reference to consolidation in § 315(d).”

Because the Court determined that “the clear and unambiguous language of § 315(c)” compelled these statutory constructions, it concluded that it need not defer to the Board’s contrary interpretation. But in “additional views” following the opinion for the Court, all three panel members explained that they would reach the same result even if the statute were ambiguous. (Such “additional views” joined by all three judges are pretty unusual, though not unheard of; see, e.g., this opinion last year from Judges Dyk, Wallach, and Hughes.) They explained that the Board’s interpretation should not receive Chevron deference because the AIA does not expressly delegate authority to either the Director or the Board to undertake statutory interpretation through precedential Board opinions. And they also declined to give the Board’s interpretation Skidmore deference because, in their view, that interpretation was unpersuasive and inconsistent with the statute’s plain text.

With the modification to the panel’s decision, the Court denied the defendant’s petition for rehearing en banc. So any further review will have to await the Supreme Court.

Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.