“Were the statute ambiguous, we would alternatively resolve this matter in the same way. Specifically, we would find that no deference is due to the POP opinion in Proppant and that the most reasonable reading of § 315(c) is the one we adopt in our majority opinion.”

In Facebook v. Windy City Innovations, the U.S. Court of Appeals for the Federal Circuit earlier today ruled that the Patent Trial and Appeal Board (PTAB) erred both in allowing Facebook to join itself to a proceeding in which it was already a party, and in allowing Facebook to add new claims to the inter partes reviews (IPRs) at issue through that joinder.

In September 2019, the USPTO filed a brief with the Federal Circuit in the case, urging the Court to accept the PTAB Precedential Opinion Panel’s (POP’s) approach, as long as the POP’s interpretation is reasonable.

In a guest post for IPWatchdog, Andrew Michaels of the University of Houston Law Center argued that “to the extent that this bid for Chevron deference is limited to procedural administrative PTAB matters such as the one at issue in [the] case, (an interpretation of 35 U.S.C. § 315(c) which relates to the USPTO Director’s ability to join a party in inter partes review [IPR]), it is arguably defensible. But to the extent that the agency claims (or plans to claim) that its precedential PTAB opinions are owed deference on issues of substantive patent law, it is likely incorrect.”

David Boundy of Cambridge Technology Law offered a different perspective, saying that “in my view, PTAB precedential decisions can be eligible for Chevron deference in only the rarest of circumstances: the PTAB is the wrong entity in the USPTO to engage in rulemaking, the PTAB doesn’t follow the procedures required by statute and executive order for rulemaking, and the PTAB doesn’t have access to the personnel within the USPTO that are necessary for rulemaking.”

The Federal Circuit agreed with both authors to some extent, finding the issue decidedly uncomplicated. Writing for the majority, Chief Judge Sharon Prost said:

Because we conclude that the clear and unambiguous language of § 315(c) does not authorize same-party joinder or joinder of new issues, we need not defer to the PTO’s interpretation of §315(c). See Chevron, U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837, 842–43 (1984) (“If the intent of Congress is clear, that is the end of the matter; for the court, as well as the agency, must give effect to the unambiguously expressed intent of Congress.”). “Even under Chevron, we owe an agency’s interpretation of the law no deference unless, after ‘employing traditional tools of statutory construction,’ we find ourselves unable to discern Congress’s meaning.” SAS, 138 S. Ct. at 1358 (quoting Chevron, 467 U.S. at 843 n.9).

In the case at hand, Windy City Innovations filed a complaint in 2015 accusing Facebook of infringing its U.S. Patent Nos. 8,458,245 (“the ’245 patent”); 8,694,657 (“the ’657 patent”); 8,473,552 (“the ’552 patent”); and 8,407,356 (“the ’356 patent”). In June 2016, “exactly one year after being served with Windy City’s complaint,” Facebook petitioned for IPR of several claims of each patent and the PTAB instituted.

Facebook later filed two additional petitions for IPR of additional claims of the ’245 and ’657 patents after Windy City had identified those claims in the district court litigation. Facebook also filed motions for joinder to the already instituted IPRs on those patents. “By the time of that filing, the one-year time bar of § 315(b) had passed,” wrote the CAFC. “The Board nonetheless instituted Facebook’s two new IPRs, and granted Facebook’s motions for joinder.”

In Windy City’s cross-appeal of the PTAB’s final written decision finding that Facebook had proven some of the challenged claims unpatentable as obvious but not others, Windy City also challenged the Board’s joinder decisions and its decision to allow Facebook to include new claims in the joined proceedings.

The text of Section 315(c) reads as follows:

(c) Joinder.— If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.

The Court read this language to clearly indicate that the stated exception applies only to “instituted IPRs”. The majority wrote:

The plain language of § 315(c) indicates that the exception to the time bar offered by the joinder provision only applies if there is an instituted IPR, meaning that a first petition must have been timely under §315(b), among other requirements.

On the topic of whether the language of § 315(c) authorizes the joinder of a person as a party to a proceeding in which it is already a party, the Court was again clear on what the plain language of § 315(c) allows. The Director is permitted “to join as a party [to an already instituted IPR] any person’ who meets certain requirements. 35 U.S.C. § 315 (emphases added).”

That is not what the Board did, said the Court. “Rather, the Board understood Facebook to be requesting that its later proceedings be joined to its earlier proceedings…. 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.”

Ultimately, the CAFC concluded that “the Board’s joinder decisions, which allowed Facebook to join itself to a proceeding in which it was already a party, and to add otherwise time-barred issues to the IPRs, were improper under § 315(c).”

Because the Court found that “the clear and unambiguous language of § 315(c) does not authorize same-party joinder or joinder of new issues,” it did not reach the issue of “what, if any, deference is owed to the PTO’s interpretation of § 315(c) by the Board’s Precedential Opinion Panel (“POP”) in Proppant Express Investments, LLC v. Oren Technologies, LLC, No. IPR2018-00914, Paper 38 (P.T.A.B. Mar. 13, 2019).”

However, the panel separately offered “additional views” on this question:

Were the statute ambiguous, we would alternatively resolve this matter in the same way. Specifically, we would find that no deference is due to the POP opinion in Proppant and that the most reasonable reading of § 315(c) is the one we adopt in our majority opinion…. The law has long been clear that the Director has no substantive rule making authority with respect to interpretations of the Patent Act. Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336 (Fed. Cir. 2008). The Board, similarly, historically has been given adjudicatory authority—similar to that given to courts—to decide the issues presented to it. The Director’s new delegation of authority in the AIA to establish procedures by regulation for the conduct of IPRs does not confer new statutory interpretive authority to the Board or change the standard under which we review their conclusions. And, the Board’s authority to adjudicate IPRs does not confer rulemaking authority upon the Director that extends to all legal questions the Board adjudicates. As noted above, the PTO’s structure has never been the type of unitary structure at issue in the cases upon which the government relies.

The PTAB’s decisions in Facebook v. Windy City ultimately were affirmed-in-part, vacated-in-part and dismissed-in-part.