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Facebook, Inc. v. Windy City Innovations, LLC

United States Court of Appeals for the Federal Circuit

March 18, 2020, Decided

2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537, 2018-1540, 2018-1541

Opinion

Prost, Chief Judge.

Windy City Innovations, LLC ("Windy City") filed a complaint accusing Facebook, Inc. ("Facebook") of infringing 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 timely petitioned for inter partes review ("IPR") of several claims of each patent. At that time, Windy City had not yet identified the specific claims it was asserting in the district court proceeding. The Patent Trial and Appeal Board ("Board") instituted IPR of each patent. In January 2017, after Windy City had identified the claims it was asserting in the district court litigation, Facebook filed two additional petitions for IPR of additional claims of the '245 and '657 patents, along with 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. The Board nonetheless instituted Facebook's two new IPRs, and granted Facebook's motions for joinder.

In the final written decisions, the Board delivered a mixed result, [*3]  holding that Facebook had shown by a preponderance of the evidence that some of the challenged claims are unpatentable as obvious but had failed to show that others were unpatentable as obvious. Importantly, many of the claims the Board found unpatentable were claims only challenged in the later-joined proceedings. Facebook appealed, and Windy City cross-appealed on the Board's obviousness findings. In its cross-appeal, Windy City also challenges the Board's joinder decisions allowing Facebook to join its new IPRs to its existing IPRs and to include new claims in the joined proceedings.

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-in-part 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 [*4]  appeal of the Board's final written decision on the '356 patent with respect to claims 14 and 33.

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2020 U.S. App. LEXIS 8522 *; 953 F.3d 1313; 2020 U.S.P.Q.2D (BNA) 10188

FACEBOOK, INC., Appellant v. WINDY CITY INNOVATIONS, LLC, Cross-Appellant

Prior History:  [*1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2016-01156, IPR2016-01157, IPR2016-01158, IPR2016-01159, IPR2017-00659, IPR2017-00709.

Facebook, Inc., v. Windy City Innovations, LLC, 2017 Pat. App. LEXIS 13169 (P.T.A.B., Dec. 6, 2017)Facebook, Inc., v. Windy City Innovations, LLC, 2017 Pat. App. LEXIS 13168 (P.T.A.B., Dec. 6, 2017)Facebook, Inc., v. Windy City Innovations, LLC, 2017 Pat. App. LEXIS 13171 (P.T.A.B., Dec. 6, 2017)Facebook, Inc., v. Windy City Innovations, LLC, 2017 Pat. App. LEXIS 13170 (P.T.A.B., Dec. 6, 2017)Windy City Innovations, LLC v. Facebook Inc., 411 F. Supp. 3d 886, 2019 U.S. Dist. LEXIS 163646 (N.D. Cal., Sept. 24, 2019)

Disposition: AFFIRMED-IN-PART, VACATED-IN-PART, DISMISSED-IN-PART.

CORE TERMS

joinder, join, patent, deference, authorize, written decision, unpatentable, proceedings, instituted, delegated, new issue, user, petitions, inter partes, same-party, argues, conference room, district court, cross-appeal, infringement, regulations, determines, ambiguous, Precedential, challenges, rulemaking, decisions, one-year, combine, parties

Civil Procedure, Appeals, Standards of Review, De Novo Review, Governments, Legislation, Interpretation, Business & Corporate Compliance, US Patent & Trademark Office Proceedings, Patent Law, US Patent & Trademark Office Proceedings, Trials, Consolidation of Actions, Parties, Joinder of Parties, Administrative Law, Judicial Review, Deference to Agency Statutory Interpretation, Patent Law, Jurisdiction & Review, Nonobviousness, Elements & Tests, Substantial Evidence