On March 18, 2020, the Federal Circuit issued its decision in Facebook, Inc. v. Windy City Innovations, LLC (available here). At issue was whether Facebook could join its own IPR after the 1-year bar date. The Federal Circuit held that Facebook could not—i.e., 35 U.S.C. § 315(c) does not permit “same party” joinder nor joinder of new issues. Simply put, someone who is already a party to the proceeding may not be “joined” as a party to the proceeding, as he is already a party.
The primary reason for Facebook’s attempted joinder appeared to be the fact that Windy City asserted patents with over 800 claims against Facebook, and Windy City was not required to identify the claims it was actually accusing Facebook of infringing until after Facebook’s 1-year bar date passed.
The Federal Circuit’s decision will therefore prompt parties to district court cases to move quickly to attempt to obtain an identification of the asserted claims or, alternatively, parties may file IPRs challenging all claims of the patents-in-suit. Challenging all claims of the patents-in-suit may have been particularly unworkable in the instant case, given that the patents-in-suit contained over 800 claims.