The Federal Circuit overturned PTAB precedent that broadly
allowed joinder under 35 U.S.C. § 315(c), holding that (1) a
party cannot be "joined as a party" to a proceeding if it
is already a party to that proceeding, and (2) the statute does not
authorize joinder of new issues.
Background
In
Facebook, Inc. v. Windy City Innovations, LLC, No.
2018-1400 (Fed. Cir. Mar. 18, 2020), the Federal Circuit overturned
the PTAB's decision that joined together four IPRs filed within
the 35 U.S.C. §315(b) time bar with two IPRs filed after the
time bar. Significantly, the court held "that the [PTAB] erred
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." In so holding, the
court also accorded no deference to the "precedential opinion
panel" status of Proppant Express Investments, LLC v. Oren
Tech. LLC, No. IPR2018-00914, Paper 38 (P.T.A.B. Mar.
