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This morning the Federal Circuit issued one precedential opinion in a patent case. Notably, in a concurrence in that case, all three judges on the panel express their view that, were the relevant statute ambiguous, they “would find that no deference is due” to a prior opinion issued by the U.S. Patent and Trademark Office’s Precedential Opinion Panel. Here are the introductions to the majority and concurring opinions.

Facebook, Inc. v. Windy City Innovations, LLC (Precedential)

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, 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-inpart 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 appeal of the Board’s final written decision on the ’356 patent with respect to claims 14 and 33.

Additional views by Prost, Chief Judge, Plager and O’Malley, Circuit Judges.

The majority opinion concludes that the clear and unambiguous language of 35 U.S.C. § 315(c) does not authorize same-party joinder and does not authorize joinder of new issues. Because the opinion concludes that § 315(c) is unambiguous, the majority does not address the question 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).

Contrary to our conclusions, however, both parties contend that a proper reading of § 315(c) unambiguously supports their respective—dramatically opposing—views of how the provision operates. Logically, while they do not say so expressly, the implication of their disagreement is that there is ambiguity in the statute that we do not perceive. Given this, and in light of the extensive attention the parties gave to the issue of deference, we address what our alternative holding would be if § 315(c) were deemed ambiguous.

Facebook argues that the POP opinion in Proppant deserves Chevron deference, see Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984), or at least Skidmore deference, see Skidmore v. Swift & Co., 323 U.S. 134, 140 (1944), and that we should, thus, defer to the conclusion in the opinion that joinders like those at issue in this case are permissible. The government, following oral argument in this case and upon our request for its views, filed a brief likewise arguing for Chevron, or at least Skidmore, deference for the Board’s interpretation of § 315(c). Having considered these arguments, we conclude that, 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.