Last week, in view of Thryv, the Federal Circuit modified its opinion in Facebook, Inc. v. Windy City Innovations, LLC to make clear that joinder issues were outside of the appeal bar.
In so holding (here), the Court explained that § 315(c) joinder includes two agency decisions:
" First, the statute requires that the Director (or the Board acting through a delegation of authority, see 37 C.F.R. §§ 42.4(a), 42.122)) determine whether the joinder applicant’s petition for IPR “warrants” institution under § 314. We may not review this decision, whether for timeliness or to consider whether the petitioner is likely to succeed on the merits. See Thryv, 140 S. Ct. at 1373 (“[Section] 314(d) bars review at least of matters ‘closely tied to the application and interpretation of statutes related to’ the institution decision.” (quoting Cuozzo, 136 S. Ct. at 2141)).
Second, to effect joinder, § 315(c) requires the Director to exercise his discretion to decide whether to “join as a party” the joinder applicant. That is, the statute requires the Director (or the Board on behalf of the Director) to make a “joinder decision.” See PTO Supp. Br. 10. The statute makes clear that the joinder decision is made after a determination that a petition warrants institution, thereby affecting the manner in which an IPR will proceed. See Thryv, 140 S. Ct. at 1377. Thus, the joinder decision is a separate and subsequent decision to the intuition decision. Nothing in § 314(d), nor any other statute, overcomes the strong presumption that we have jurisdiction to review that joinder decision.
After finding it has jurisdiction, the Windy City panel held that joinder of the new claims was improper, it vacated the Board’s final written decisions, and it remanded to the Board to determine whether to institute the late-filed petitions. On remand, the PTAB will almost certainly dismiss the petition as time-barred having lost the joinder exception tot he 12-month time bar.
It is difficult to square this decision with the Federal Circuit’s decision in Fitbit, Inc. v. Valencell, Inc. which I discussed back back in July. There, a Federal Circuit panel (Newman, Dyk, and Reyna) indicated that the Director’s decision to institute and join parties under § 315(c) is not subject to review because, like § 315(b), it seemed “closely related to [the Director’s] decision whether to institute inter partes review and is therefore rendered nonappealable by § 314(d).” Thryv, 140 S. Ct. at 1370.
While the Court is correct that there is technically a separate institution, this may be a distinction without a difference. The petition is a copycat of the earlier instituted petition, so, in all practical respects, there is no new “decision.” The new petition is just a requisite component of the motion to join, and it occurs after the original petition.
In any event, mostly an academic debate to practitioners. Even without binding precedent (if Windy City were overturned en banc), I would not expect the PTAB to go back to its former practice of accepting same party (i.e., issue) joinder.