Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 61
`Entered: April 13, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`ORDER FOLLOWING REMAND
`37 C.F.R. § 42.5(a)
`
`
`Tel: 571-272-7822
`
`Paper 61
`Entered: April 13, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`ORDER FOLLOWING REMAND
`37 C.F.R. § 42.5(a)
`
`
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`On July 31, 2017, we instituted a trial in IPR2017-00659, joined it to
`IPR2016-01159, and terminated IPR2017-00659 under 37 C.F.R. § 42.72.
`IPR2017-00659, Paper 11; IPR2016-01159, Paper 34. On August 1, 2017,
`we instituted a trial in IPR2017-00709, joined it to IPR2016-01156, and
`terminated IPR2017-00709 under Rule 72. IPR2017-00709, Paper 11;
`IPR2016-01156, Paper 34. The later-filed Petitions challenged additional
`claims of the ’245 and ’657 patents not challenged in the earlier-filed
`petitions. We issued Final Written Decisions in IPR2016-01156 and
`IPR2016-01159 on December 6, 2017, ruling on the claims challenged in
`both the earlier-filed petitions and the later-filed petitions. See, e.g.,
`IPR2016-01156, Paper 52. Petitioner appealed these Final Written
`Decisions. See, e.g., IPR2016-01156, Paper 53.
`Patent Owner cross-appealed and, in particular, challenged our joinder
`decisions. See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d
`1321, 1329–30 (Fed. Cir. 2020). The Federal Circuit determined that 35
`U.S.C. § 315(c) does not authorize same-party joinder and does not
`authorize the joinder of new issues; thus, the Federal Circuit determined that
`the joinder of later-filed claims to the earlier-filed inter partes reviews was
`improper and vacated our Final Written Decisions as to those claims. Id. at
`1330–44. As the Federal Circuit noted, by the time the later-filed petitions
`were filed, the time bar of 35 U.S.C. § 315(b) had passed. Id. at 1325.
`However, the Federal Circuit determined that it “lack[ed] authority to review
`the Board’s institution of the two late-filed petitions,” and “remand[ed] to
`
`2
`
`
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`the Board to consider whether the termination of those proceedings finally
`resolves them.” Id. at 1326.1
`We invited the parties to file short papers providing input regarding
`the proper procedure on remand. IPR2016-001156, Paper 56.2 Patent
`Owner filed its statement proposing post-remand procedures. IPR2016-
`01156, Paper 57. Patent Owner argues:
`Because the [P]etitions are statutorily time-barred, the Board is
`not authorized under the current statutory framework to review
`U.S. Patent Nos. 8,458,245 and 8,694,657 on any grounds
`petitioned in IPR2016-01156 and IPR2016-01159.
`Accordingly, there are no issues requiring supplemental
`briefing, and the Board should issue an order terminating the
`actions so that the Board and the parties do not continue to
`unnecessarily expend resources.
`Id. at 1 (footnote omitted).3
`Petitioner filed a paper requesting that we hold any remand decision
`in abeyance until after the time had expired for it to petition the Supreme
`Court for certiorari. IPR2016-01156, Paper 58. After that time expired,
`Petitioner filed its statement of proposed remand procedures. IPR2016-
`01156, Paper 59. Petitioner argues:
`
`
`1 The claims challenged in the later-filed petitions, subject to the Federal
`Circuit’s vacate and remand, are claims 19 and 22–25 of the ’245 patent and
`claims 203, 209, 215, 221, 477, 482, 487, and 492 of the ’657 patent. See
`Facebook, 973 F.3d at 1342, 1344.
`2 We cite to the parties’ papers filed in IPR2016-01156 because virtually
`identical papers are filed in IPR2016-01159.
`3 We presume Patent Owner intended to argue that we are not authorized to
`review the challenged patents on any grounds petitioned in IPR2017-00659
`and IPR2017-00709, as the two later-filed cases, not the two earlier-filed
`cases, are subject to the time bar of 35 U.S.C. § 315(b).
`
`3
`
`
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`[B]ecause the Board already terminated IPR2017-00709 in
`connection with joining that proceeding to IPR2016-01156 (see
`IPR2017-00709, Paper 11 at 11), and the Federal Circuit
`vacated the Final Written Decision in IPR2016-01156 only as it
`pertains to the joined claims, nothing remains for the Board on
`the merits regarding either of those proceedings. Petitioner
`requests that the Board terminate the proceedings as to the
`remanded claims.
`Id. at 1.
`
`As noted above, the Federal Circuit “conclude[d] 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.” Facebook, 973 F.3d at 1338.
`Accordingly, the Federal Circuit determined as follows:
`In light of the foregoing, we hold that the Board’s joinder
`decisions, which allowed Facebook to join itself to a
`proceeding in which it was already a party, and to add
`otherwise time-barred issues to the IPRs, were improper under
`§ 315(c). We therefore vacate-in-part the Board’s final written
`decisions with respect to the improperly added claims.
`Specifically, the Board’s final written decision on the ’245
`patent is vacated with respect to claims 19 and 22–25, and the
`Board’s final written decision on the ’657 patent is vacated with
`respect to claims 203, 209, 215, 221, 477, 482, 487, and 492, all
`of which were added to the proceedings through improper
`joinder. With respect to these claims, we remand to the Board,
`in order for the Board to consider whether the termination of
`the instituted proceedings related to the two late-filed petitions
`finally resolves those proceedings.
`Id. at 1338–39.
`
`In light of the Federal Circuit’s ruling and instructions, and after
`having considered the parties’ input, we determine that the proper course of
`action is to vacate our Joinder Orders (IPR2017-00659, Paper 11 and
`
`4
`
`
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`IPR2017-00709, Paper 11)4 and to deny Petitioner’s Motions for Joinder in
`these two proceedings (Paper 3 in both IPR2017-00659 and IPR2017-00709)
`as improper under § 315(c). See Facebook, 973 F.3d at 1338–39. Petitioner
`admits that the Petition in each of these proceedings was filed more than one
`year after Petitioner was served with a complaint alleging infringement of
`the patent challenged in the respective Petition. See IPR2017-00659,
`Paper 2, 5; IPR2017-00709, Paper 2, 5. Because we deny Petitioner’s
`Motions for Joinder, and § 315(c) is not applicable to either proceeding, we
`determine that both Petitions are time barred. See 35 U.S.C. § 315(b) (“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).”). Accordingly, we vacate the previous institutions of inter partes
`review and deny the requests for inter partes review in IPR2017-00659 and
`IPR2017-00709.
`
`It is
`
`ORDERED that the Institution and Joinder Orders (IPR2017-00659,
`Paper 11; IPR2017-00709, Paper 11) are vacated;
`FURTHER ORDERED that Petitioner’s Motions for Joinder
`(IPR2017-00659, Paper 3; IPR2017-00709, Paper 3) are denied;
`
`
`4 Copies of the Joinder Orders filed in IPR2017-00659 and IPR2017-00709
`were filed as Paper 34 in IPR2016-01159 and IPR2016-01156, respectively.
`
`5
`
`
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`FURTHER ORDERED that the Petition in IPR2017-00709 (Paper 2)
`is denied as to claims 19 and 22–25 of the ’245 patent, and no inter partes
`review is instituted;
`FURTHER ORDERED that the Petition in IPR2017-00659 (Paper 2)
`is denied as to claims 203, 209, 215, 221, 477, 482, 487, and 492 of the ’657
`patent, and no inter partes review is instituted;
`FURTHER ORDERED that the Final Written Decision in IPR2016-
`01156 (Paper 52) remains unchanged as to claims 1–15, 17, and 18 of the
`’245 patent; and
`FURTHER ORDERED that the Final Written Decision in IPR2016-
`01159 (Paper 52) remains unchanged as to claims 189, 334, 342, 348, 465,
`580, 584, and 592 of the ’657 patent.
`
`
`
`
`
`6
`
`
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`
`PATENT OWNER:
`
`Vincent J. Rubino, III
`Peter Lambrianakos
`FABRICANT LLP
`vrubino@fabricantllp.com
`plambrianakos@fabricantllp.com
`
`7
`
`
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