Opinions

This morning, the Federal Circuit issued a nonprecedential order granting panel rehearing to withdraw and replace a prior precedential opinion in Facebook, Inc. v. Windy City Innovations, LLC, a patent case addressing joinder of parties and claims in inter partes review proceedings. The court subsequently issued a modified precedential opinion in the case, along with a seperate order denying en banc rehearing in the same case. The court also issued a nonprecedential opinion affirming the dismissal of another case for lack of jurisdiction. Here are the introductions to the opinions and the text of the orders.

Facebook, Inc. v. Windy City Innovations, LLC (Nonprecedential Order)

Appellant Facebook, Inc. filed a combined petition for panel rehearing and rehearing en banc.

Upon consideration thereof,

IT IS ORDERED THAT:

The petition for panel rehearing is granted to the extent that the previous precedential opinion and judgment issued March 18, 2020, are withdrawn and replaced with the modified precedential opinion and judgment accompanying this order.

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, granted Facebook’s motions for joinder, and terminated the new IPRs.

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 late-filed petitions. 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 its joinder decisions 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. Because joinder of the new claims was improper, we vacate the Board’s final written decisions as to those claims, but because we lack authority to review the Board’s institution of the two late-filed petitions, we remand to the Board to consider whether the termination of those proceedings finally resolves them.

We also hold that the Board’s obviousness determinations on the originally instituted claims are supported by substantial evidence. We therefore affirm-in-part, vacate-in-part, and remand 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.  

Facebook, Inc. v. Windy City Innovations, LLC (Nonprecedential Order)

Appellant Facebook, Inc. filed a combined petition for panel rehearing and rehearing en banc. The petition was first referred to the panel that heard the appeal, which granted the petition in part as indicated in the accompanying order. Thereafter, the petition was referred to the circuit judges who are in regular active service.

Upon consideration thereof,

IT IS ORDERED THAT:

1) The petition for rehearing en banc is denied.

2) The mandate of the court will issue on October 13, 2020.

Hitsman v. United States (Nonprecedential)

Robert Hitsman appeals from the final decision of the United States Court of Federal Claims dismissing his complaint for lack of subject-matter jurisdiction. Specifically, Mr. Hitsman appears to challenge the trial court’s determination that it lacked subject-matter jurisdiction to consider his claim for unlawful seizure of assets. Because the Court of Federal Claims lacks subject-matter jurisdiction over Mr. Hitsman’s claim, we affirm.