PTAB wrong to let Facebook join IPR proceedings: Fed Circ
The US Court of Appeals for the Federal Circuit has concluded that the Patent Trial and Appeal Board (PTAB) erred in allowing Facebook to join proceedings that it was already involved in.
In a decision issued yesterday, March 18, the appeals court said the law was “clear and unambiguous” that the PTAB had erred in granting Facebook’s joinder motion, as well as allowing the company to raise new, time-barred claims.
The decision follows a dispute between the social media platform and patent owner Windy City Innovations.
Windy City sued Facebook in 2015, at the US District Court for the Northern District of California, accusing the company of infringing four patents covering a system for communicating over a computer-based network.
The patented system includes a controller computer, linked to a series of participator computers, capable of “providing a chat capability suitable for handling graphical, textual, and multimedia information”.
In June 2016, exactly one year after being hit with the suit, Facebook petitioned for inter partes review (IPR) of the patents at the US Patent and Trademark Office (USPTO).
At the time, Windy City had not yet identified the specific claims it was asserting in its patent infringement lawsuit against Facebook.
In January 2017, Windy City specified which claims it was asserting in the suit, prompting Facebook to file two additional IPR petitions challenging these claims, in addition to the four petitions filed previously.
When filing the January 2017 IPR petitions, Facebook also submitted motions to join these proceedings to the four IPRs already instituted by the PTAB.
These additional two petitions would normally be time-barred under US patent law, which gives parties accused of infringing a patent a year to petition for IPR of those claims.
But in this case, the PTAB decided to institute the additional two IPR proceedings, despite Windy City’s lawsuit having been filed 18 months previously, and joined them to the earlier proceedings.
However, in yesterday’s judgment, the Federal Circuit ruled that the law was “clear and unambiguous” in prohibiting parties from joining proceedings in which they are already involved.
The Federal Circuit said it was also clear that the PTAB should not have allowed Facebook to add new claims to the proceedings, when a year had passed since it was accused of infringing the patents.
The PTAB’s decision on the IPRs was mixed, concluding that Facebook had proven that some, but not all of the claims, were unpatentable as obvious.
“Importantly, many of the claims the board found unpatentable were claims only challenged in the later-joined proceedings,” the Federal Circuit decision said.
The appeals court vacated the PTAB’s decisions covering the claims which were wrongly joined to the proceedings. However, it also found that the PTAB’s decision covering the remaining claims were “supported by substantial evidence”.
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