Facebook, Inc. v. Windy City Innovations, LLC

 
APPEAL NO.
18-1400
OP. BELOW
SUBJECT
Patent
AUTHOR
Prost

Issue(s) Presented

1. “Did the Board err in its Final Written Decision in IPR2016-01156 finding that claims 1-15, 17-19 and 22-25 of the ’245 patent were not unpatentable as obvious under 35 U.S.C. § 103(a) over the instituted grounds?”

2. “Did the Board err in its Final Written Decision in IPR2016-01159 finding that claims 203, 209, 215 and 221 of the ’657 patent were not unpatentable as obvious under 35 U.S.C. § 103(a) over the instituted grounds?”

3. “Did the Board err in its Final Written Decision in IPR2016-01158 finding that claims 1, 4, 6, 8, 9 and 18-58 of the ’552 patent were not unpatentable as obvious under 35 U.S.C. § 103(a) over the instituted grounds?”

4. “Did the Board err in its Final Written Decision in IPR2016-01157 finding that claims 14 and 33 of the ’356 patent were not unpatentable as obvious under 35 U.S.C. § 103(a) over the instituted grounds?”

5. “Is there substantial evidence to support the Board’s conclusion in IPR2016- 01156 that claims 1-15, 17-19 and 22-25 of the ’245 Patent were not unpatentable as obvious under 35 U.S.C. § 103(a) over the instituted grounds?”

6. “Is there substantial evidence to support the Board’s conclusion in IPR2016- 01159 that claims 203, 209, 215 and 221 of the ’657 Patent were not unpatentable as obvious under 35 U.S.C. § 103(a) over the instituted grounds?”

7. “Is there substantial evidence to support the Board’s conclusion in IPR2016- 01158 that claims 1, 4, 6, 8, 9 and 18-58 of the ’552 Patent were not unpatentable as obvious under 35 U.S.C. § 103(a) over the instituted grounds?”

8. “Did the Board err when it found that a person of ordinary skill in the art would combine U.S. Patent No. 6,608,636 (‘Roseman’) and EP 0621532 A1 (‘Rissanen’) in Final Written Decisions in IPR2017-01157, IPR2017-01158 and IPR2017-01159?”

9. “Did the Board twice exceed its statutory authority and abuse its discretion when it granted joinder to Facebook –– an otherwise-time-barred party that was already the petitioner in the case –– in order to add new claims and new issues to two instituted inter partes review.”

Holding

1. & 5. “In sum, the Board’s final written decision on the ’245 patent is affirmed with respect to claims 1–15, 17, and 18 and vacated with respect to claims 19 and 22–25. 2. & 6. “The Board’s final written decision on the ’657 patent is affirmed with respect to claims 189, 334, 342, 348, 465, 580, 584, and 592 and vacated with respect to claims 203, 209, 215, 221, 477, 482, 487, and 492.” 3. & 7. “The Board’s final written decision on the ’552 patent is affirmed.” 4. “The Board’s final written decision on the ’356 patent is affirmed with respect to claims 1–9, 12, 15–28, 31, and 34–37. Facebook’s appeal of the Board’s final written decision on the ’356 is dismissed as moot with respect to claims 14 and 33.” 8. & 9. “Accordingly, we hold that the clear and unambiguous meaning of § 315(c) does not authorize joinder of two proceedings, and does not authorize the Director to join a person to a proceeding in which that person is already a party.” “The Board’s joinder decisions in this case, which allowed Facebook to add otherwise time-barred issues to its IPRs, were therefore improper under § 315(c). We accordingly vacate the Board’s final written decisions with respect to the claims improperly added through joinder. We also hold that substantial evidence supports the Board’s obviousness determinations.” “[W]e need not defer to the PTO’s interpretation of § 315(c).”

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