Facebook, Inc. v. Windy City Innovations, LLC

Docket No. 2018-1400-3, -1537, -1540-41 (IPR2016-00=1156-59, IPR2017-00659, -00709
PROST, PLAGER, O’MALLEY
March 18, 2020

Brief Summary: Board improperly joined FB as a party to its own existing IPRs under section 315(c); various obviousness conclusions affirmed-in-part, vacated-in-part, and affirmed.

Summary: Windy City (WC) sued Facebook (FB) for infringement of US 8,548,245; 8,694,657; 8,473,552; and 8,407,356 related to methods for handling “‘out-of-band’ multimedia information” and “‘censorship’ of content”. FB filed petitions for IPR of each of the four patents on the last day of the one-year window from the date WC filed its complaint (section 315(b); see FN3 regarding the Board’s decision not to institute IPR against two of the claims and the FC’s decision not to revive those grounds (SAS, US 2018)). Then, “]m]ore than four months after the one-year deadline to file IPRs” (section 315(b)), WC “identified the claims of each patent it was asserting in the [DC] case” and FB “then prepared two additional petitions for IPR challenging the[] additional asserted claims” asking the Board to join these to the existing proceedings under section 315(c), which the Board did (e.g., “not likely to affect the scope of the trial significantly”, APJs raised concerns with permitting a party to, essentially, join itself” (Nidec, FC 2017)). WC argued in this appeal of the Board’s final written decisions (FWDs) that section 315(c) “does not authorize same-party joinder” or “joinder of new issues material to patentability, such as new claims or new grounds”, and the FC panel agreed. The FC panel explained that explained, however, that “an essential premise of the Board’s decision was that [section] 315(c) authorizes two proceedings to be joined, rather than joining a person as a party to an existing proceeding” and that this is not allowed under section 315(c), but is the subject of section 315(d). However, it understood the Board to have “in fact joined Facebook ‘as a party’ to its existing IPRs” which is not authorized under “[t]he clear and unambiguous language of” section 315(c), noting that “the Board’s Precedential Opinion” (Proppant, PTAB March 13, 2019) incorrectly “came to the opposite conclusion” (see the concurrence, no deference due under Chevron (US 1984)). The FC panel explained that “the language in 315(c) does not more than authorize the Director to join 1) a person 2) as a party, 3) to an already instituted IPR”, and not to join “new issues” (which is allowed under section 315(d)). The FC panel therefore vacated the relevant parts of the Board’s FWDs.

The Board’s FWDs also addressed FB’s allegations of obviousness. The Board’s decision was affirmed-in-part and vacated-in-part with respect to the ‘245 patent (e.g., FB’s position “is based on attorney argument rather than evidence in the record”), the ‘657 patent (e.g., “[a] person of ordinary skill is…not an automaton” (KSR, US 2007), “straightforward and predictable choice”); affirmed as to the ‘552 patent (not unpatentable) (e.g., “Roseman does not satisfy this limitation”); and affirmed-in-part as to the ‘356 patent (“obvious to combine”).

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.