Page 23 - CLT032320

NEWS MARCH 23, 2020 ¦ 23

Invents Act, if it wants them to be partly insulated
from Federal Circuit review.
That is, if the rest of the court agrees with the non-
binding “additional views” published by Chief Judge
Sharon Prost and Judges Kathleen O’Malley and S.
Jay Plager at the end of Wednesday’s Facebook v.
Windy City Innovations.
The case is playing out against the backdrop of
a Supreme Court that is increasingly hostile to the
idea that Article III courts should defer to execu-
tive agency interpretations of statutes. PTO Director
Andrei Iancu, who has pledged repeatedly to make
Patent Trial and Appeal Board justice more fair and
predictable, tried to get out in front of the deference
issue by creating the POP panel in 2018.
The PTO argued to the Federal Circuit that Con-
gress formally authorized it to implement the AIA, Chief Judge Sharon Prost of the U.S. Court of Appeals
and that the POP provides notice of its hearings, in-
for the Federal Circuit.

vites amicus briefs from the public and holds oral perceived as most perilous in three petitions before
hearings, making it comparable to formal notice- the one-year window closed. After Windy City nar-
and-comment. rowed its district court case, Facebook moved to
join five new petitions to its existing PTAB case. The
The Federal Circuit disagreed. “There is no indi- PTAB accepted the joinder and ended up canceling
cation in the [AIA] that Congress either intended some patent claims while upholding others.
to delegate broad substantive rulemaking author-
ity to the Director to interpret statutory provisions The PTAB’s rank-and-file administrative judges
through POP opinions or intended him to engage in have long disagreed about whether joinder is an ac-
any rulemaking other than through the mechanism ceptable end around the one-year time bar. Once
of prescribing regulations,” the three judges wrote. the PTAB institutes IPR proceedings, the AIA gives
the PTO director discretion to “join as a party ... any
The result is that the Federal Circuit’s interpreta- person who properly files a petition” within 30 days.
tion of the AIA will control Facebook’s dispute with The dispute is over whether that means a party can
Windy City, not the PTO’s expertise on the matter. join its own proceedings. Even in Facebook’s case,
two of the three judges on its panel said they dis-
Windy City Innovations holds patents from the agreed with the agency’s interpretation.
1990s on improving privacy and security in a confer-
encing environment. The four patents it’s asserting The Precedential Opinion Panel settled the issue
against Facebook number 830 separate claims. The in a separate case in March. PTAB Chief Judge Scott
AIA requires that petitioners bring their validity Boalick wrote in Proppant Express Investments v.
challenges within one year of being sued for patent Oren Technologies that the AIA permits parties to
infringement.

But Windy City didn’t specify which of the 830
claims it would be litigating until after the year ran. join their own litigation, but that the PTAB would
Challenging the validity of all 830 claims would allow it only in limited circumstances, such as in the
have required 30 petitions for inter partes review case of gamesmanship. Iancu and Commissioner of
at a cost of nearly $1 million just for filing, Cooley Patents Drew Hirshfeld concurred.
partner Heidi Keefe argued for Facebook. Instead, The Federal Circuit essentially overruled both the
the company took the approach many other PTAB Facebook and Proppant decisions Wednesday. The
petitioners have taken: It challenged the claims it
¦ Continued on PAGE 24

CONNECTICUT
Law Tribune