In a previous post, we reported that the PTAB’s Precedential Opinion Panel (POP) tackled issue joinder in Proppant Express Investments v. Oren Techs. IPR2018-00914, Paper 24 at 2.
As background, in Proppant, the POP addressed the following issues:
- Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
- Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
- Does the existence of a time bar under § 315(b), or any other relevant facts, have any impact on the first two questions?
The POP determined that § 315(c) “provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding.” IPR2018-00914, Paper 38, at 4.
In Facebook, Inc., v. Windy City Innovations, LLC, the Federal Circuit reversed the POP opinion. 953 F.3d 1313 (Fed. Cir. 2020) (the “Decision”). Specifically, the court held that “[t]he clear and unambiguous text of § 315(c) does not authorize same-party joinder, and does not authorize the joinder of new issues.” Decision at 1322.
The Federal Circuit reached its decision on joinder by relying, in part, on the plain language of § 315(c). The statute recites:
“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.”
35 U.S.C. § 315(c) (emphasis added).
The court began by determining whether § 315(c) authorizes same-party joinder, and the related issue, joinder of multiple proceedings. Decision at 1323. The court determined that § 315(c) “authorizes the Director to ‘join as a party to [an IPR] any person who’ meets certain requirements, i.e., who properly files a petition the Director finds warrants the institution of an IPR under § 314.” Id. Therefore, § 315(c) does not provide authority for joinder of multiple proceedings. Id. Rather, joinder of multiple proceedings, or consolidation, is authorized by § 315(d). Id. The distinction between joinder in § 315(c) and consolidation in § 315(d) is “a matter of the plain meaning of familiar legal terms,” which the court noted is also reflected in the Federal Rules of Civil Procedure. See Federal Rules of Civil Procedure 19 and 20 (describing joinder of parties) and 42 (describing consolidation of proceedings). Id. at 1324.
Second, regarding same-party joinder, the court focused on the phrase “join as a party” in § 315(c). Relying on the ordinary legal usage of “party,” the court concluded that “joinder of a person as a party is uniformly about adding someone that is not already a party.” Id. Therefore, the court held that the plain meaning of § 315(c) does not authorize same-party joinder (i.e., joinder of multiple proceedings).
The court noted that its interpretation of same-party joinder contrasted with the POP’s interpretation in Proppant. Specifically, the court held that the POP’s interpretation depended on the phrase “any person,” which the POP said allows for the Director to join “every person who properly files a petition that warrants institution.” Id. In contrast, the Federal Circuit relied on the entire phrase “may join as a party [to the IPR] any person.” Id. Using this approach, the court determined that ‘“join as a party to a proceeding’ on its face limits the range of ‘person[s]’ covered to those who, in normal legal discourse, are capable of being joined as a party to a proceeding (a group further limited by the own-petition requirements), and an existing party to the proceeding is not so capable.” Id. at 1324-25.
Finally, regarding whether § 315(c) authorizes joinder of new issues, the court again relied on the language in § 315(c) and determined that “§ 315(c) does no more than authorize the Director to join 1) a person 2) as a party 3) to an already instituted IPR.” Id. at 1325. And because the petition drives the proceeding (SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356 (2018)), the already-instituted IPR is confined to the claims and grounds challenged in the original petition. Therefore, § 315(c) does not authorize joinder of new issues, but only “allows the Director discretion to join a person as a party to an already instituted IPR.” Id.
Regarding the issue of deference to the POP’s interpretation of § 315(c), the court asserted that “[b]ecause 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 [POP’s] interpretation of § 315(c).” Id. at 1328. Nevertheless, all three panel members joined “additional views” to express their shared view that that POP opinions are entitled to no deference in any event. Id. at 1337-44.