In Facebook, Inc. v. Windy City Innovations, Nos. 2018-1400 et al. (Fed. Cir. March 18, 2020), the PTO Patent Trial and Appeal Board had instituted an IPR proceeding with respect to certain claims of patents asserted in an underlying lawsuit where Windy City had not yet identified the specific claims it was asserting in the district court proceeding. After it identified the claims it was asserting, Facebook filed two additional petitions for IPR for additional claims but by the time of that filing, the one-year time bar had passed. The Board granted Facebook’s request to add new petitions raising new issues to the already instituted proceeding, but the Federal Circuit reversed, holding that the “clear and unambiguous text of § 315(c) does not authorize same-party joinder, and does not authorize the joinder of new issues.” As a result of this decision, a petitioner will need to file IPR petitions on any and all claims it wants to challenge in original or follow-on petitions within one year of service of the complaint, regardless of when a patentee identifies specific claims that it will be asserting.
Lerner David has significant experience in achieving successful outcomes for its clients as both IPR petitioners and respondents.
The decision can be found at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1400.Opinion.3-18-2020_1552952.pdf.