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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`FACEBOOK, INC.,
`Appellant
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Cross-Appellant
`______________________
`
`2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537,
`2018-1540, 2018-1541
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2016-
`01156, IPR2016-01157, IPR2016-01158, IPR2016-01159,
`IPR2017-00659, IPR2017-00709.
`______________________
`
`OPINION ISSUED: March 18, 2020
`OPINION MODIFIED: September 4, 2020*
`______________________
`
`HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, argued
`for appellant. Also represented by ANDREW CARTER MACE,
`LOWELL D. MEAD, MARK R. WEINSTEIN; ELIZABETH
`
`
`* This opinion has been modified and reissued fol-
`lowing a combined petition for panel rehearing and rehear-
`ing en banc filed by Appellant.
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC
`
`PRELOGAR, Washington, DC. Also argued by PHILLIP
`EDWARD MORTON.
`
`VINCENT J. RUBINO, III, Fabricant LLP, New York, NY,
`argued for cross-appellant. Also represented by ALFRED
`ROSS FABRICANT, ENRIQUE WILLIAM ITURRALDE, PETER
`LAMBRIANAKOS.
`
`JEREMY COOPER DOERRE, Tillman Wright PLLC, Char-
`lotte, NC, as amicus curiae, pro se.
`
`JOSHUA KOPPEL, Appellate Staff, Civil Division, United
`States Department of Justice, Washington, DC, for amicus
`curiae United States. Also represented by JEFFREY ERIC
`SANDBERG, SCOTT R. MCINTOSH, ETHAN P. DAVIS; THOMAS
`W. KRAUSE, JOSEPH MATAL, FARHEENA YASMEEN RASHEED,
`MOLLY R. SILFEN, Office of the Solicitor, United States Pa-
`tent and Trademark Office, Alexandria, VA.
`
`DAVID E. BOUNDY, Cambridge Technology Law LLC,
`Newton, MA, as amicus curiae, pro se.
`______________________
`
`Before PROST, Chief Judge, PLAGER and O’MALLEY,
`Circuit Judges.
`Opinion for the court filed by Chief Judge PROST, in which
`PLAGER and O’MALLEY, Circuit Judges, join.
`Additional views filed by Chief Judge PROST and Circuit
`Judges PLAGER and O’MALLEY.
`PROST, Chief Judge.
`Windy City Innovations, LLC (“Windy City”) filed a
`complaint accusing Facebook, Inc. (“Facebook”) of infring-
`ing 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,
`
`
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC
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`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 Ap-
`peal Board (“Board”) instituted IPR of each patent. In Jan-
`uary 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 termi-
`nated the new IPRs.
` In the final written decisions, the Board delivered a
`mixed result, holding that Facebook had shown by a pre-
`ponderance 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 peti-
`tions, we remand to the Board to consider whether the ter-
`mination of those proceedings finally resolves them.
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC
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`We also hold that the Board’s obviousness determina-
`tions 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 deci-
`sion on the ’356 patent with respect to claims 14 and 33.
`I
`A
`The ’245, ’657, ’552, and ’356 patents share a common
`specification and claim priority to a patent application filed
`on April 1, 1996.1 The patents are generally related to
`methods for communicating over a computer-based net-
`work. The specification discloses a system with a “control-
`ler computer [1],” a plurality of “participator computers 5,”
`and a “connection 13,” linking the controller computer with
`each of the participator computers, as shown in Figure 1
`below.
`
`
`1 For convenience, references to the specification cite
`only the ’245 patent.
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`’245 patent at col. 4 l. 65–col. 5 l. 18, fig. 1. The specifica-
`tion describes “provid[ing] a chat capability suitable for
`handling graphical, textual, and multimedia information.”
`Id. at col. 2 ll. 15–17.
`Two features described in the specification are relevant
`to this appeal: (1) the ability to handle “out-of-band” multi-
`media information, i.e., information that a receiving com-
`puter may be unable to present on its own; and (2) the
`ability to control the dissemination of information among
`participator computers, which is referred to in the patents
`as “censorship” of content. The ’245 patent claims relate to
`the “out-of-band” feature, and the ’657, ’552, and ’356 pa-
`tent claims relate to the “censorship” features. These fea-
`tures are discussed in more detail in Part II.B when
`addressing the technical merits of the appeal and cross-ap-
`peal.
`
`B
`On June 2, 2015, Windy City filed a complaint against
`Facebook alleging infringement of the ’245, ’657, ’552, and
`’356 patents (“the asserted patents”) in the U.S. District
`Court for the Western District of North Carolina. Windy
`City’s complaint did not specify which claims of the four
`asserted patents (collectively having a total of 830 claims)
`Facebook allegedly infringed. See J.A. 7996–8006 (alleging
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`infringement of “claims of the patents-in-suit”). Facebook
`was served with the complaint on June 3, 2015, starting
`the statutory one-year clock for Facebook to file petitions
`for IPR of the asserted patents. See 35 U.S.C. § 315(b).
`On July 24, 2015, Facebook filed a motion to dismiss,
`arguing that the complaint did not provide adequate notice
`of Windy City’s infringement allegations because it did not
`identify which claims were asserted against which Face-
`book products. On August 25, 2015, Facebook filed a mo-
`tion to transfer the case to the U.S. District Court for the
`Northern District of California. The North Carolina dis-
`trict court did not rule on either motion for several months.
`On March 16, 2016, the North Carolina district court
`granted Facebook’s motion to transfer but did not rule on
`Facebook’s motion to dismiss.
`Upon transfer to the Northern District of California,
`the district court issued a scheduling order on April 6,
`2016, setting a case management conference for July 7,
`2016.2 Under Northern District of California Patent Local
`Rule 3-1, Windy City would be required to identify its as-
`serted claims 14 days later—more than one month after the
`expiration of the one-year time bar to file petitions for IPR
`of the asserted patents. On May 4, 2016, with the one-year
`bar date approaching, Facebook filed a motion asking the
`district court to order Windy City to identify no more than
`40 asserted claims by May 16, 2016. The district court de-
`nied the motion on May 17, 2016.
`On June 3, 2016, the last day of the one-year window,
`Facebook filed a petition for IPR of each of the four asserted
`patents. The petitions challenged some, but not all, of the
`claims of each patent. Specifically, Facebook challenged
`claims 1–15, 17, and 18 of the ’245 patent; claims 189, 334,
`
`
`2 The case management conference was ultimately
`held at a later date.
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`342, 348, 465, 580, 584, and 592 of the ’657 patent; claims
`1–61 and 64 of the ’552 patent; and claims 1–9, 12, 14–28,
`31, and 33–37 of the ’356 patent. The Board instituted re-
`view of all of the challenged claims and grounds in the pe-
`titions, except for claims 60 and 61 of the ’552 patent.3
`More than four months after the one-year deadline to
`file IPRs, on October 19, 2016, Windy City identified the
`claims of each patent that it was asserting in the district
`court case. Some of the claims of the ’245 and ’657 patents
`that Windy City asserted were claims that Facebook had
`not challenged in its petitions for IPR of those patents. Fa-
`cebook then prepared two additional petitions for IPR chal-
`lenging these additional asserted claims. Specifically,
`these petitions challenged claims 19 and 22–25 of the
`’245 patent and claims 203, 209, 215, 221, 477, 482, 487,
`and 492 of the ’657 patent. Because the petitions would
`otherwise have been time-barred under 35 U.S.C. § 315(b),
`Facebook filed the petitions along with motions asking the
`Board to join each new proceeding to the already-instituted
`IPR on the same patent under § 315(c). Windy City op-
`posed the motions for joinder.
`The Board instituted Facebook’s late-filed petitions
`and granted Facebook’s motions for joinder, allowing the
`
`3 The Board’s institution decisions were issued prior
`to the Supreme Court’s decision in SAS Institute, Inc. v.
`Iancu, 138 S. Ct. 1348 (2018), which held that the Director
`cannot institute on fewer than all of the claims challenged
`in the petition. In this case, no party seeks SAS-based re-
`lief. “[A]lthough [SAS] now makes clear that the Board
`erred in limiting the scope of the IPRs it instituted and
`hence the scope of its final written decisions, we have juris-
`diction to address the merits of the Board’s final written
`decisions and . . . we need not, and will not, sua sponte re-
`vive the ‘non-instituted’ claims and grounds.” PGS Geo-
`physical AS v. Iancu, 891 F.3d 1354, 1357 (Fed. Cir. 2018).
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`newly challenged claims to be added to the proceedings.
`See J.A. 7385–402, 8162–76. In the same order, the Board
`also
`terminated
`the newly
`instituted proceedings.
`J.A. 7399, 8172.
`In considering whether to grant the motions for join-
`der, the Board reasoned that “although the newly chal-
`lenged claims are not identical” to those challenged in the
`original petitions, “the substance is very similar such that
`the addition of [the new] claims . . . is not likely to affect
`the scope of the trial significantly.” J.A. 7393; see also
`J.A. 8168–69. The Board also noted that joinder would not
`significantly disrupt the trial schedule, briefing, or discov-
`ery. J.A. 7394, 8169. In addition, the Board determined
`that Facebook did not unduly delay in challenging the new
`claims in the second petitions filed with the motions for
`joinder. J.A. 7394–97, 8169–71. The Board agreed with
`Facebook that Windy City’s district court complaint gener-
`ally asserting the “claims” of the asserted patents “cannot
`reasonably be considered an allegation that Petitioner in-
`fringes all 830 claims of the several patents asserted.”
`J.A. 7395; see also J.A. 8170. The Board therefore found
`that Facebook could not have reasonably determined which
`claims were asserted against it within the one-year time
`bar. See J.A. 7395–96, 8170. Once Windy City identified
`the asserted claims after the one-year time bar, the Board
`found that Facebook did not delay in challenging the newly
`asserted claims by filing the second petitions with the mo-
`tions for joinder. J.A. 7397, 8170. For each new petition,
`the Board held that Facebook “has established good cause
`for joining this proceeding with the [existing] IPR.”
`J.A. 8172. Accordingly, the Board ordered that each new
`IPR “is hereby joined with” the corresponding existing IPR.
`Two Administrative Patent Judges (“APJs”) on the
`panels joined concurring opinions, raising “concerns with
`permitting a party to, essentially, join to itself.” J.A. 7400;
`see also J.A. 8173. In their view, Ҥ 315(c), when properly
`interpreted, does not authorize same-party joinder because
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`a party cannot be joined to a proceeding ‘as a party’ if it
`already is a party to that proceeding.” J.A. 7401, 8174.
`While this view was shared by two of the three APJs on the
`panel, it was expressed in a concurring opinion because,
`“the Director repeatedly has taken the position . . . that
`such same-party joinder is permitted by § 315(c)” and the
`concurring APJs agreed to follow that position in this case,
`“[d]espite [their] disagreement with the Director’s inter-
`pretation.” J.A. 7401 (citing Brief for Intervenor – Director
`of the United States Patent and Trademark Office at 32–
`39, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013 (Fed. Cir. 2017) (No. 16-2321)); see also
`J.A. 8174–75 (same). Over the concerns expressed in the
`concurrence, Facebook was permitted to join its otherwise
`time-barred IPR proceedings to instituted IPR proceedings
`where it was already a party.
`In its final written decision on the ’245 patent (which
`considered the claims challenged in the original petition as
`well as the second petition filed with the motion for join-
`der), the Board held that Facebook had failed to show by a
`preponderance of the evidence that claims 1–15, 17–19,
`and 22–25 are unpatentable as obvious. Facebook, Inc. v.
`Windy City Innovations, LLC, No. IPR2016-01156, Pa-
`per 52, at 34 (P.T.A.B. Dec. 6, 2017) (“’245 Final Written
`Decision”).
`In its final written decision on the ’657 patent (which
`also considered the claims challenged in both the original
`petition and the second petition), the Board held that Fa-
`cebook had shown by a preponderance of the evidence that
`claims 189, 334, 342, 348, 465, 477, 482, 487, 492, 580, 584,
`and 592 are unpatentable as obvious but had failed to show
`that claims 203, 209, 215, and 221 are unpatentable as ob-
`vious. Facebook, Inc. v. Windy City Innovations, LLC,
`No. IPR2016-01159, Paper 52, at 56 (P.T.A.B. Dec. 6, 2017)
`(“’657 Final Written Decision”).
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`In its final written decision on the ’552 patent, the
`Board held that Facebook had shown by a preponderance
`of the evidence that claims 2, 3, 5, 7, 10–17, 59, and 64 are
`unpatentable as obvious but had failed to show that claims
`1, 4, 6, 8, 9, and 18–58 are unpatentable as obvious. Face-
`book, Inc. v. Windy City Innovations, LLC, No. IPR2016-
`01158, Paper 47, at 59 (P.T.A.B. Dec. 6, 2017) (“’552 Final
`Written Decision”).
`In its final written decision on the ’356 patent, the
`Board held that Facebook had shown by a preponderance
`of the evidence that claims 1–9, 12, 15–28, 31, and 34–37
`are unpatentable as obvious but had failed to show that
`claims 14 and 33 are unpatentable as obvious. Facebook,
`Inc. v. Windy City Innovations, LLC, No. IPR2016-01157,
`Paper 47, at 59 (P.T.A.B. Dec. 6, 2017) (“’356 Final Written
`Decision”).
`Facebook timely appealed, and Windy City cross-ap-
`pealed. We have jurisdiction pursuant to 28 U.S.C.
`§ 1295(a)(4)(A).
`
`II
`On appeal, Facebook argues that the Board erred in
`finding that Facebook failed to prove that claims 1–15, 17–
`19, and 22–25 of the ’245 patent; claims 203, 209, 215, and
`221 of the ’657 patent; claims 1, 4, 6, 8, 9, and 18–58 of the
`’552 patent; and claims 14 and 33 of the ’356 patent are
`unpatentable as obvious over the instituted grounds.
`In its cross-appeal, Windy City argues that the Board
`erred in finding that a person of ordinary skill in the art
`would have been motivated to combine the prior art refer-
`ences in each IPR. Windy City also appeals the Board’s
`joinder decisions, arguing that they were improper because
`35 U.S.C. § 315(c) does not authorize same-party joinder
`and does not authorize joinder of new issues.
`We begin by addressing the Board’s joinder decisions
`raised in Windy City’s cross-appeal. We then turn to the
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
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`technical merits presented in Facebook’s appeal and Windy
`City’s cross-appeal.
`
`A
`In its cross-appeal, Windy City argues that the Board’s
`decisions granting joinder were improper and should be re-
`versed. Windy City presents two issues of statutory inter-
`pretation: whether 35 U.S.C. § 315(c) permits a person to
`be joined as a party to a proceeding in which it was already
`a party (“same-party” joinder); and whether it permits new
`issues to be added to an existing IPR through joinder (“new
`issue” joinder), including issues that would otherwise be
`time-barred.
`
`1
`Statutory interpretation is an issue of law that we re-
`view de novo. Unwired Planet, LLC v. Google Inc., 841 F.3d
`1376, 1379 (Fed. Cir. 2016). “In statutory construction, we
`begin ‘with the language of the statute.’” Kingdomware
`Techs., Inc. v. United States, 136 S. Ct. 1969, 1976 (2016)
`(quoting Barnhart v. Sigmon Coal Co., 534 U.S. 438, 450
`(2002)). Our “first step ‘is to determine whether the lan-
`guage at issue has a plain and unambiguous meaning with
`regard to the particular dispute in the case.’” Barnhart,
`534 U.S. at 450 (quoting Robinson v. Shell Oil Co., 519 U.S.
`337, 340 (1997)). “It is a ‘fundamental canon of statutory
`construction that the words of a statute must be read in
`their context and with a view to their place in the overall
`statutory scheme.’” Food & Drug Admin. v. Brown & Wil-
`liamson Tobacco Corp., 529 U.S. 120, 133 (2000) (quoting
`Davis v. Mich. Dep’t of Treasury, 489 U.S. 803, 809 (1989)).
`2
`35 U.S.C. § 315 governs the relationship between IPRs
`and other proceedings. Sections 315(b) and (c) recite:
`
`Universal Electronics Inc., Exhibit 2003
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`(b) Patent Owner’s Action.—An inter partes re-
`view may not be instituted if the petition request-
`ing the proceeding is filed more than 1 year after
`the date on which the petitioner, real party in in-
`terest, 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 sub-
`section (c).
`(c) Joinder.—If the Director institutes an inter
`partes review, the Director, in his or her discretion,
`may join as a party to that inter partes review any
`person who properly files a petition under section
`311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the
`time for filing such a response, determines war-
`rants the institution of an inter partes review un-
`der section 314.
`
`3
`As a threshold issue, Facebook and the United States
`Patent and Trademark Office (“PTO”) as amicus curiae ar-
`gue that we do not have jurisdiction to review the Board’s
`joinder decisions in this case. We disagree.
`Facebook and the PTO rely on 35 U.S.C. § 314(d),
`which provides that “[t]he determination by the Director to
`institute an inter partes review under this section shall be
`final and nonappealable.” In Cuozzo Technologies, LLC v.
`Lee, the Supreme Court held that § 314(d) overcomes the
`“strong presumption” favoring judicial review to preclude
`review of the Board’s institution decision where the
`grounds for attacking that decision “consist of questions
`that are closely tied to the application and interpretation
`of statutes related to the [PTO’s] decision to initiate inter
`partes review.” 136 S. Ct. 2131, 2140–41 (2016). Applying
`§ 314(d) in Cuozzo, the Court specifically held that we may
`
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`not review an institution decision on the basis that the pe-
`tition did not satisfy the requirements of 35 U.S.C.
`§ 312(a)(3), which states that the petition must identify the
`grounds of challenge “with particularity.” Id. at 2142. The
`Court explained that an argument that the “petition was
`not pleaded ‘with particularity’ under § 312 is little more
`than a challenge to the PTO’s conclusion, under § 314(a),
`that the ‘information presented in the petition’ warranted
`review.” Id.
`The Supreme Court next considered § 314(d) in SAS
`Institute, Inc. v. Iancu, where it concluded that the statute
`does not preclude judicial review of the Board’s decision to
`institute fewer than all of the claims challenged in an IPR
`petition. 138 S. Ct. 1348, 1359–60 (2018). The Court ex-
`plained that while § 314(d) precludes review of whether
`there is a “reasonable likelihood that the claims are un-
`patentable on the grounds asserted,” the statute does not
`“enable the agency to act outside its statutory limits,” and
`thus, that § 314(d) does not preclude review where the
`agency has “exceeded [its] statutory authority.” Id. at 1359
`(internal citations omitted).
`More recently in Thyrv, Inc. v. Click-to-Call Technolo-
`gies, LP, the Supreme Court held that the PTO’s applica-
`tion of § 315(b)’s time bar is “closely related to its decision
`whether to institute inter partes review and is therefore
`rendered nonappealable by § 314(d).” 140 S. Ct. 1367, 1370
`(2020). The Court explained that § 315(b)’s “time limita-
`tion is integral to, indeed a condition on, institution” and
`concluded that “[a] challenge to a petition’s timeliness un-
`der § 315(b) thus raises ‘an ordinary dispute about the ap-
`plication of’ an institution-related statute.” Id. at 1373
`(quoting Cuozzo, 136 S. Ct. at 2139). Furthermore, the
`Court distinguished SAS, explaining that unlike the issue
`in SAS, the review of a petition’s timeliness challenges
`“whether the agency should have instituted review at all,”
`not “the manner in which the agency’s review proceeds
`once instituted.” Id. at 1376.
`
`Universal Electronics Inc., Exhibit 2003
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`According to Facebook, the Supreme Court’s decision
`in Thryv confirms that § 314(d) precludes review “of the
`PTO’s decision to institute a second IPR and join it to an
`existing IPR.” Appellant’s Supp. Br. 1.4 In particular, Fa-
`cebook emphasizes that § 315(c) requires a request for join-
`der to be accompanied by a petition for IPR, and argues
`that therefore “Windy City’s attack on joinder is that the
`follow-on IPRs should not have been instituted at all.” Id.
`at 9, 11–12.
`The PTO similarly, though more narrowly, argues that
`“[a]t least where the Board institutes an inter partes re-
`view on a petition that would otherwise be untimely, the
`Board’s application of section 315(c) is ‘integral to, indeed
`a condition on, institution.’” PTO Supp. Br. 6.5 The PTO,
`however, expressly states that:
`This case does not require the Court to address
`whether section 314(d) would bar review of a join-
`der decision when reversal would not have the ef-
`fect of reversing the [PTO’s] institution decision—
`for example, when the [PTO] grants the joinder mo-
`tion of a party who filed a petition within, rather
`than after, the one-year time limitation of section
`315(b).
`PTO Supp. Br. 11 n.1. Thus, the PTO does not argue that
`§ 314(d) precludes judicial review of all Board joinder deci-
`sions, but instead argues that the statute precludes review
`where the petition filed with that request would otherwise
`have been untimely.
`
`
`“Appellant’s Supp. Br.” refers to Facebook’s supple-
`4
`mental brief, ECF No. 107, filed June 10, 2020.
`5
`“PTO Supp. Br.” refers to the PTO’s brief for the
`United States as amicus curiae, ECF No. 106, filed June
`10, 2020.
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case: 18-1400 Document: 112 Page: 15 Filed: 09/04/2020
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`FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC
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`15
`
`In contrast, Windy City argues that the Board’s joinder
`decisions in this case are “a separate procedural process
`with separate requirements and a different purpose than
`institution.” Appellee’s Supp. Br. 2.6 Windy City further
`argues that its appeal of the Board’s joinder decisions in
`this case challenges whether the Board “exceeded the scope
`of its statutory authority under § 315(c) by granting Face-
`book’s motions for joinder.” Id. at 1–2; see also id. at 10.
`According to Windy City, like SAS, its appeal does not
`“challenge a conclusion by the Board that the requirements
`of initiating review under § 314 were satisfied,” but chal-
`lenges the Board’s joinder decisions in “already-instituted
`IPRs.” Id. at 10. We agree with Windy City.
`To join a party to an instituted IPR, the plain language
`of § 315(c) requires two different decisions. First, the stat-
`ute 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 stat-
`ute 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
`
`“Appellee’s Supp. Br.” refers to Windy City’s sup-
`6
`plemental brief, ECF No. 108, filed June 10, 2020.
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

`

`Case: 18-1400 Document: 112 Page: 16 Filed: 09/04/2020
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`16
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`FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC
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`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.
`In this case, Windy City’s cross-appeal does not chal-
`lenge the Board’s decision to institute Facebook’s follow-on
`petitions, but challenges whether the Board’s joinder deci-
`sions exceeded the statutory authority provided by
`§ 315(c). Windy City’s appeal, therefore, is unlike the chal-
`lenges raised in Cuozzo and Thryv, which specifically
`sought review of petitions that the Board had instituted
`and the decisions to institute those petitions, which there-
`fore were barred by § 314(d). Instead, Windy City’s appeal
`of the Board’s joinder decisions is more like the reviewable
`challenge in SAS, which concerned whether the PTO had
`exceeded its statutory authority as to the manner in which
`the already-instituted IPR proceeded.
`Accordingly, we have jurisdiction to review the Board’s
`joinder decisions in this case to determine whether the
`Board (on behalf of the Director) acted outside any statu-
`tory limits under § 315(c).
`
`4
`Because we have jurisdiction to review the Board’s
`joinder decisions in this case, we now turn to the merits of
`Windy City’s cross appeal. Windy City argues that § 315(c)
`does not authorize same-party joinder and also that it does
`not authorize joinder of new issues material to patentabil-
`ity, such as new claims or new grounds. Facebook disputes
`both points, arguing that § 315(c) authorizes same-party
`joinder and that it does not prohibit joinder of new issues.7
`
`7 Facebook also argues that Windy City waived its
`arguments challenging the Board’s joinder decisions by
`
`
`Universal Electronics Inc., Exhibit 2003
`Roku, Inc. v. Universal Electronics Inc., IPR2020-01012
`
`

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`Both Windy City and Facebook contend that the statute is
`clear and unambiguous in favor of their respective inter-
`pretations. See Cross-Appellant’s Response Br. 40, 44; Ap-
`pellant’s Reply and Response Br. 28, 31.
`We agree with Windy City on both points. The clear
`and unambiguous text of § 315(c) does not authorize same-
`party joinder, and does not authorize the joinder of new is-
`sues. Beginning with the statutory language, § 315(b) ar-
`ticulates the time-bar for when an IPR “may not be
`instituted.” 35 U.S.C. § 315(b). But § 315(b) includes a
`specific exception to the time bar. By its own terms, “[t]he
`time limitation . . . shall not apply to a request for joinder
`under subsection (c).” Id.
`
`
`failing to raise them before the Board. But Windy City op-
`posed Facebook’s motions for joinder, arguing that “[g]rant-
`ing joinder would result in Facebook circumventing . . .
`statutory limitations on petitioners, all within the Board’s
`familiarity . . . .” J.A. 7371, 8147. The Board was quite fa-
`miliar with the issue, as evidenced by the concurring opin-
`ion, where two APJs expressed the view that Ҥ 315(c),
`when properly interpreted, does not authorize same-party
`joinder because a party cannot be joined