35 U.S.C. § 315(c) : CAFC Alert


| April 10, 2020


March 18, 2020

Prost, Plager and O’Malley (Opinion by Prost)

SummaryPlaintiff/Patent Holder Windy Citysuccessfully cross-appealed against Facebook on the issue of improper joinder of IPRs under 35 U.S.C. § 315(c).  Facebook had filed IPRs within one year of Windy City’s District Court complaint and then joined later filed IPRs adding new claims. The PTAB had allowed the joinder.  The CAFC vacated the Board’s joinder finding that Facebook could not join their own already filed IPRs.


In June 2016, exactly one year after being served with Windy City’s complaint for infringement of four patents related to methods for communicating over a computer-based net-work, 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 four patents totaled 830 claims. The Patent Trial and Appeal Board (“Board”) instituted IPRs 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 two of the patents.  Facebook concurrently filed motions for joinder to the already instituted IPRs on those patents.    By the time of filing the new IPRs, 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.

The Board agreed with Facebook that Windy City’s district court complaint generally asserting  the  “claims” of the asserted patents “cannot reasonably be considered  an  allegation  that  Petitioner  infringes  all  830  claims of the several patents asserted.”  The Board therefore found that Facebook could not have reasonably determined which claims were asserted against it within the one-year  time  bar.  Once Windy City identified the asserted claims after the one-year time bar, the  Board  found  that  Facebook did not delay in challenging the newly asserted claims  by  filing  the  second  petitions  with  the  motions  for joinder.

The Board found that Facebook had shown by a  preponderance  of  the  evidence  that  some  of  the  challenged  claims are unpatentable, many  of  these  claims  had only been challenged in the later filed and joined IPRs.  Facebook appealed and Windy City cross-appealed on the Board’s  obviousness  findings.   Further, Windy City also challenged 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.  Windy City’s cross-appeal on the joinder issue is addressed here.


In its cross-appeal, Windy City argued that the Board’s decisions granting joinder were improper on the basis that 35 U.S.C. § 315(c): (1) does not permit a person to be joined as a party to a proceeding in which it was already a party (“same-party” joinder); and (2) does not permit new issues to be added to an existing IPR through joinder (“new issue”  joinder),  including  issues  that  would  otherwise  be  time-barred.

Sections 315(b) and (c) recite:  

(b) Patent Owner’s Action. —An inter partes review may not be instituted if the petition requesting  the  proceeding  is  filed  more  than  1  year  after  the date on which the petitioner, real party in interest,  or  privy  of  the  petitioner  is  served  with  a  complaint alleging infringement of the patent.  The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).

(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 CAFC noted that §315(b) articulates the time-bar for when an IPR “may not be instituted.” 35 U.S.C. §315(b). But §315(b) includes a specific exception to the time bar, namely “[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).”

Regarding the propriety of Facebooks joinder, the Court held the plain language of §315(c) allows the  Director  “to  join  as  a  party  [to  an  already  instituted  IPR]  any  person”  who  meets  certain  requirements.    However, when the Board instituted Facebook’s later petitions and granted its joinder motions, the Board did not purport to  be  joining  anyone as a party.  Rather, the Board understood Facebook to be requesting that its later proceedings be joined to its earlier proceedings.  The CAFC concluded that the Boards interpretation of §315(c) was incorrect because their decision authorized two proceedings to be joined, rather than joining a person as a party to an existing proceeding.

Section 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. No part of § 315(c) provides the Director or the Board with the authority to put two proceedings together. That is the subject of § 315(d), which provides for “consolidation,” among other options, when “[m]ultiple proceedings” involving the patent are before the PTO.35 U.S.C. § 315.

The Court went on to explain that the clear and unambiguous language of § 315(c) confirms that it does not allow an existing party to be joined as a new party, noting that subsection (c) allows the Director to “join as a party to [an IPR] any person who” meets certain threshold requirements. They noted that it would be an extraordinary usage of the term “join as a party” to refer to persons who were already a party.  Finding the phrase “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.

            Regarding the second issue raised by Windy City that the Joinder cannot include newly raised issues, the CAFC found the language in §315(c) does no more than authorize the Director to join 1) a person 2) as a party, 3) to an already instituted IPR. Finding this language does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding, particularly when those new issues are other-wise time-barred.

            The Court noted that under the statute, the already-instituted IPR to which a person may join as a party is governed by its own petition and is  confined  to  the  claims  and  grounds  challenged in that petition.

            In reaching these conclusions, the Court did acknowledge the rock and hard place Facebook is left in.

            We do not disagree with Facebook that the result in this particular case may seem in tension with one of the AIA’s objectives for IPRs “to provide ‘quick and cost effective alternatives’ to litigation in the courts.” [Citations omitted] Indeed, it is fair to assume that when Congress imposed the one-year time bar of § 315(b), it did not explicitly contemplate a situation where an accused infringer had not yet ascertained which specific claims were being asserted against it in a district court proceeding before the end of the one-year time period. We also recognize that our analysis here may lead defendants, in some circumstances, to expend effort and expense in challenging claims that may ultimately never be asserted against them.

            However, the Court gave little remedy to bearing an enormous “effort and expense” of filing IPRs to 830 claims, asserting that they are bound by the unambiguous nature of the statute.

Petitioners who, like Facebook, are faced with an enormous number of asserted claims on the eve of the IPR filing deadline, are not without options. As a protective measure, filing petitions challenging hundreds of claims remains an available option for accused infringers who want to ensure that their IPRs will challenge each of the eventually asserted claims. An accused infringer is also not obligated to challenge every, or any, claim in an IPR. Accused infringers who are unable or unwilling to challenge every claim in petitions retain the ability to challenge the validity of the claims that are ultimately asserted in the district court. Accused infringers who wish to protect their option of proceeding with an IPR may, moreover, make different strategy choices in federal court so as to force an earlier narrowing or identification of asserted claims. Finally, no matter how valid, “policy considerations cannot create an ambiguity when the words on the page are clear.” SAS, 138 S. Ct. at 1358. That job is left to Congress and not to the courts.

            Hence, the CAFC concluded that the clear and unambiguous  language of §315(c) does not authorize same-party joinder, and also does not authorize joinder of new issues, including issues that would otherwise be time-barred. As a result, they vacated the Board’s decisions on all claims which were asserted in the later filed IPRs.

Take AwayA loop-hole between the one-year time bar, joinder statute for IPRs and District Court timing potentially gives a Plaintiff/Patent holder the ability to render an IPR more cost inefficient to a Defendant/Petitioner.  By not identifying the claims to be asserted within one year of filing a patent infringement complaint, the patent holder can place a large burden on filing an IPR.  Plaintiffs/Patent holders can strategize to assert infringement ambiguously to a prohibitive number of claims early in a District Court proceeding.  Defendants will need to attempt to counter such a strategy by requesting District Courts to force Plaintiffs to identify the specific claims which will be asserted within one year of filing the complaint.

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