Facebook, Inc. v. Windy City Innovations, LLC

Case: 18-1400 Document: 97 Page: 1 Filed: 03/18/2020

United States Court of Appeals

for the Federal Circuit

______________________

FACEBOOK, INC.,

Appellant

v.

WINDY CITY INNOVATIONS, LLC,

Cross-Appellant

______________________

2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537,

2018-1540, 2018-1541

______________________

Appeals from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in Nos. IPR2016-

01156, IPR2016-01157, IPR2016-01158, IPR2016-01159,

IPR2017-00659, IPR2017-00709.

______________________

Decided: March 18, 2020

______________________

HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, argued

for appellant. Also represented by ANDREW CARTER MACE,

LOWELL D. MEAD, MARK R. WEINSTEIN. Also argued by

PHILLIP EDWARD MORTON, Washington, DC.

VINCENT J. RUBINO, III, Brown Rudnick, LLP, New

York, NY, argued for cross-appellant. Also represented by

ALFRED ROSS FABRICANT, ENRIQUE WILLIAM ITURRALDE,

PETER LAMBRIANAKOS.

Case: 18-1400 Document: 97 Page: 2 Filed: 03/18/2020

2 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

JEREMY COOPER DOERRE, Tillman Wright PLLC, Char-

lotte, NC, as amicus curiae, pro se.

JEFFREY ERIC SANDBERG, Appellate Staff, Civil Divi-

sion, United States Department of Justice, Washington,

DC, for amicus curiae United States. Also represented by

SCOTT R. MCINTOSH, JOSEPH H. HUNT; THOMAS W. KRAUSE,

JOSEPH MATAL, FARHEENA YASMEEN RASHEED, MOLLY R.

SILFEN, Office of the Solicitor, United States Patent and

Trademark Office, Alexandria, VA.

DAVID E. BOUNDY, Cambridge Technology Law LLC,

Newton, MA, as amicus curiae, pro se.

______________________

Before PROST, Chief Judge, PLAGER and O’MALLEY,

Circuit Judges.

Opinion for the court filed by Chief Judge PROST, in which

PLAGER and O’MALLEY, Circuit Judges, join.

Additional views filed by Chief Judge PROST and Circuit

Judges PLAGER and O’MALLEY.

PROST, Chief Judge.

Windy City Innovations, LLC (“Windy City”) filed a

complaint accusing Facebook, Inc. (“Facebook”) of infring-

ing U.S. Patent Nos. 8,458,245 (“the ’245 patent”);

8,694,657 (“the ’657 patent”); 8,473,552 (“the ’552 patent”);

and 8,407,356 (“the ’356 patent”). In June 2016, exactly

one year after being served with Windy City’s complaint,

Facebook timely petitioned for inter partes review (“IPR”)

of several claims of each patent. At that time, Windy City

had not yet identified the specific claims it was asserting

in the district court proceeding. The Patent Trial and Ap-

peal Board (“Board”) instituted IPR of each patent. In Jan-

uary 2017, after Windy City had identified the claims it

was asserting in the district court litigation, Facebook filed

two additional petitions for IPR of additional claims of the

Case: 18-1400 Document: 97 Page: 3 Filed: 03/18/2020

FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 3

’245 and ’657 patents, along with motions for joinder to the

already instituted IPRs on those patents. By the time of

that filing, the one-year time bar of § 315(b) had passed.

The Board nonetheless instituted Facebook’s two new

IPRs, and granted Facebook’s motions for joinder.

In the final written decisions, the Board delivered a

mixed result, holding that Facebook had shown by a pre-

ponderance of the evidence that some of the challenged

claims are unpatentable as obvious but had failed to show

that others were unpatentable as obvious. Importantly,

many of the claims the Board found unpatentable were

claims only challenged in the later-joined proceedings. Fa-

cebook appealed, and Windy City cross-appealed on the

Board’s obviousness findings. In its cross-appeal, Windy

City also challenges the Board’s joinder decisions allowing

Facebook to join its new IPRs to its existing IPRs and to

include new claims in the joined proceedings.

For the reasons explained below, we hold that the

Board erred in allowing Facebook to join itself to a proceed-

ing in which it was already a party, and also erred in al-

lowing Facebook to add new claims to the IPRs through

that joinder. We also hold that the Board’s obviousness de-

terminations on the originally instituted claims are sup-

ported by substantial evidence. We therefore affirm-in-

part and vacate-in-part the Board’s final written decisions

on the ’245 and ’657 patents, affirm the Board’s final writ-

ten decision on the ’552 patent, and affirm-in-part the

Board’s final written decision on the ’356 patent. We dis-

miss as moot Facebook’s appeal of the Board’s final written

decision on the ’356 patent with respect to claims 14 and

33.

I

A

The ’245, ’657, ’552, and ’356 patents share a common

specification and claim priority to a patent application filed

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4 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

on April 1, 1996. 1 The patents are generally related to

methods for communicating over a computer-based net-

work. The specification discloses a system with a “control-

ler computer [1],” a plurality of “participator computers 5,”

and a “connection 13,” linking the controller computer with

each of the participator computers, as shown in Figure 1

below.

’245 patent at col. 4 l. 65–col. 5 l. 18, fig. 1. The specifica-

tion describes “provid[ing] a chat capability suitable for

handling graphical, textual, and multimedia information.”

Id. at col. 2 ll. 15–17.

Two features described in the specification are relevant

to this appeal: (1) the ability to handle “out-of-band” multi-

media information, i.e., information that a receiving com-

puter may be unable to present on its own; and (2) the

ability to control the dissemination of information among

participator computers, which is referred to in the patents

as “censorship” of content. The ’245 patent claims relate to

the “out-of-band” feature, and the ’657, ’552, and ’356 pa-

1 For convenience, references to the specification cite

only the ’245 patent.

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 5

tent claims relate to the “censorship” features. These fea-

tures are discussed in more detail in Part II.B when ad-

dressing the technical merits of the appeal and cross-

appeal.

B

On June 2, 2015, Windy City filed a complaint against

Facebook alleging infringement of the ’245, ’657, ’552, and

’356 patents (“the asserted patents”) in the U.S. District

Court for the Western District of North Carolina. Windy

City’s complaint did not specify which claims of the four

asserted patents (collectively having a total of 830 claims)

Facebook allegedly infringed. See J.A. 7996–8006 (alleging

infringement of “claims of the patents-in-suit”). Facebook

was served with the complaint on June 3, 2015, starting

the statutory one-year clock for Facebook to file petitions

for IPR of the asserted patents. See 35 U.S.C. § 315(b).

On July 24, 2015, Facebook filed a motion to dismiss,

arguing that the complaint did not provide adequate notice

of Windy City’s infringement allegations because it did not

identify which claims were asserted against which Face-

book products. On August 25, 2015, Facebook filed a mo-

tion to transfer the case to the U.S. District Court for the

Northern District of California. The North Carolina dis-

trict court did not rule on either motion for several months.

On March 16, 2016, the North Carolina district court

granted Facebook’s motion to transfer but did not rule on

Facebook’s motion to dismiss.

Upon transfer to the Northern District of California,

the district court issued a scheduling order on April 6,

2016, setting a case management conference for July 7,

2016. 2 Under Northern District of California Patent Local

2 The case management conference was ultimately

held at a later date.

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6 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

Rule 3-1, Windy City would be required to identify its as-

serted claims 14 days later—more than one month after the

expiration of the one-year time bar to file petitions for IPR

of the asserted patents. On May 4, 2016, with the one-year

bar date approaching, Facebook filed a motion asking the

district court to order Windy City to identify no more than

40 asserted claims by May 16, 2016. The district court de-

nied the motion on May 17, 2016.

On June 3, 2016, the last day of the one-year window,

Facebook filed a petition for IPR of each of the four asserted

patents. The petitions challenged some, but not all, of the

claims of each patent. Specifically, Facebook challenged

claims 1–15, 17, and 18 of the ’245 patent; claims 189, 334,

342, 348, 465, 580, 584, and 592 of the ’657 patent; claims

1–61 and 64 of the ’552 patent; and claims 1–9, 12, 14–28,

31, and 33–37 of the ’356 patent. The Board instituted re-

view of all of the challenged claims and grounds in the pe-

titions, except for claims 60 and 61 of the ’552 patent. 3

More than four months after the one-year deadline to

file IPRs, on October 19, 2016, Windy City identified the

claims of each patent that it was asserting in the district

court case. Some of the claims of the ’245 and ’657 patents

that Windy City asserted were claims that Facebook had

3 The Board’s institution decisions were issued prior

to the Supreme Court’s decision in SAS Institute, Inc. v.

Iancu, 138 S. Ct. 1348 (2018), which held that the Director

cannot institute on fewer than all of the claims challenged

in the petition. In this case, no party seeks SAS-based re-

lief. “[A]lthough [SAS] now makes clear that the Board

erred in limiting the scope of the IPRs it instituted and

hence the scope of its final written decisions, we have juris-

diction to address the merits of the Board’s final written

decisions and . . . we need not, and will not, sua sponte re-

vive the ‘non-instituted’ claims and grounds.” PGS Geo-

physical AS v. Iancu, 891 F.3d 1354, 1357 (Fed. Cir. 2018).

Case: 18-1400 Document: 97 Page: 7 Filed: 03/18/2020

FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 7

not challenged in its petitions for IPR of those patents. Fa-

cebook then prepared two additional petitions for IPR chal-

lenging these additional asserted claims. Specifically,

these petitions challenged claims 19 and 22–25 of the ’245

patent and claims 203, 209, 215, 221, 477, 482, 487, and

492 of the ’657 patent. Because the petitions would other-

wise have been time-barred under 35 U.S.C. § 315(b), Fa-

cebook filed the petitions along with motions asking the

Board to join each new proceeding to the already instituted

IPR on the same patent under § 315(c). Windy City op-

posed the motions for joinder.

The Board granted Facebook’s motions for joinder and

allowed the newly challenged claims to be added to the pro-

ceedings. See J.A. 7385–402, 8162–76. In considering

whether to grant the motions for joinder, the Board rea-

soned that “although the newly challenged claims are not

identical” to those challenged in the original petitions, “the

substance is very similar such that the addition of [the

new] claims . . . is not likely to affect the scope of the trial

significantly.” J.A. 7393; see also J.A. 8168–69. The Board

also noted that joinder would not significantly disrupt the

trial schedule, briefing, or discovery. J.A. 7394, 8169. In

addition, the Board determined that Facebook did not un-

duly delay in challenging the new claims in the second pe-

titions filed with the motions for joinder. J.A. 7394–97,

8169–71. The Board agreed with Facebook that Windy

City’s district court complaint generally asserting the

“claims” of the asserted patents “cannot reasonably be con-

sidered an allegation that Petitioner infringes all 830

claims of the several patents asserted.” J.A. 7395; see also

J.A. 8170. The Board therefore found that Facebook could

not have reasonably determined which claims were as-

serted against it within the one-year time bar. See J.A.

7395–96, 8170. Once Windy City identified the asserted

claims after the one-year time bar, the Board found that

Facebook did not delay in challenging the newly asserted

claims by filing the second petitions with the motions for

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8 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

joinder. J.A. 7397, 8170. For each new petition, the Board

held that Facebook “has established good cause for joining

this proceeding with the [existing] IPR.” J.A. 8172. Ac-

cordingly, the Board ordered that each new IPR “is hereby

joined with” the corresponding existing IPR.

Two Administrative Patent Judges (“APJs”) on the

panels joined concurring opinions, raising “concerns with

permitting a party to, essentially, join to itself.” J.A. 7400;

see also J.A. 8173. In their view, Ҥ 315(c), when properly

interpreted, does not authorize same-party joinder because

a party cannot be joined to a proceeding ‘as a party’ if it

already is a party to that proceeding.” J.A. 7401, 8174.

While this view was shared by two of the three APJs on the

panel, it was expressed in a concurring opinion because,

“the Director repeatedly has taken the position . . . that

such same-party joinder is permitted by § 315(c)” and the

concurring APJs agreed to follow that position in this case,

“[d]espite [their] disagreement with the Director’s inter-

pretation.” J.A. 7401 (citing Brief for Intervenor – Director

of the United States Patent and Trademark Office at 32–

39, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor

Co., 868 F.3d 1013 (Fed. Cir. 2017) (No. 16-2321)); see also

J.A. 8174–75 (same). Over the concerns expressed in the

concurrence, Facebook was permitted to join its otherwise

time-barred IPR proceedings to instituted IPR proceedings

where it was already a party.

In its final written decision on the ’245 patent (which

considered the claims challenged in the original petition as

well as the second petition filed with the motion for join-

der), the Board held that Facebook had failed to show by a

preponderance of the evidence that claims 1–15, 17–19,

and 22–25 are unpatentable as obvious. Facebook, Inc. v.

Windy City Innovations, LLC, No. IPR2016-01156, Paper

52, at 34 (P.T.A.B. Dec. 6, 2017) (“’245 Final Written Deci-

sion”).

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 9

In its final written decision on the ’657 patent (which

also considered the claims challenged in both the original

petition and the second petition), the Board held that Fa-

cebook had shown by a preponderance of the evidence that

claims 189, 334, 342, 348, 465, 477, 482, 487, 492, 580, 584,

and 592 are unpatentable as obvious but had failed to show

that claims 203, 209, 215, and 221 are unpatentable as ob-

vious. Facebook, Inc. v. Windy City Innovations, LLC,

No. IPR2016-01159, Paper 52, at 56 (P.T.A.B. Dec. 6, 2017)

(“’657 Final Written Decision”).

In its final written decision on the ’552 patent, the

Board held that Facebook had shown by a preponderance

of the evidence that claims 2, 3, 5, 7, 10–17, 59, and 64 are

unpatentable as obvious but had failed to show that claims

1, 4, 6, 8, 9, and 18–58 are unpatentable as obvious. Face-

book, Inc. v. Windy City Innovations, LLC, No. IPR2016-

01158, Paper 47, at 59 (P.T.A.B. Dec. 6, 2017) (“’552 Final

Written Decision”).

In its final written decision on the ’356 patent, the

Board held that Facebook had shown by a preponderance

of the evidence that claims 1–9, 12, 15–28, 31, and 34–37

are unpatentable as obvious but had failed to show that

claims 14 and 33 are unpatentable as obvious. Facebook,

Inc. v. Windy City Innovations, LLC, No. IPR2016-01157,

Paper 47, at 59 (P.T.A.B. Dec. 6, 2017) (“’356 Final Written

Decision”).

Facebook timely appealed, and Windy City cross-ap-

pealed. We have jurisdiction pursuant to 28 U.S.C.

§ 1295(a)(4)(A).

II

On appeal, Facebook argues that the Board erred in

finding that Facebook failed to prove that claims 1–15, 17–

19, and 22–25 of the ’245 patent; claims 203, 209, 215, and

221 of the ’657 patent; claims 1, 4, 6, 8, 9, and 18–58 of the

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10 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

’552 patent; and claims 14 and 33 of the ’356 patent are

unpatentable as obvious over the instituted grounds.

In its cross-appeal, Windy City argues that the Board

erred in finding that a person of ordinary skill in the art

would have been motivated to combine the prior art refer-

ences in each IPR. Windy City also argues that joinder was

improper because 35 U.S.C. § 315(c) does not authorize

same-party joinder and does not authorize joinder of new

issues.

We begin by addressing the joinder issue raised in

Windy City’s cross-appeal then turn to the technical merits

presented in Facebook’s appeal and Windy City’s cross-ap-

peal.

A

In its cross-appeal, Windy City argues that the Board’s

decisions granting joinder were improper and should be re-

versed. Windy City presents two issues of statutory inter-

pretation: whether 35 U.S.C. § 315(c) permits a person to

be joined as a party to a proceeding in which it was already

a party (“same-party” joinder); and whether it permits new

issues to be added to an existing IPR through joinder (“new

issue” joinder), including issues that would otherwise be

time-barred.

1

Statutory interpretation is an issue of law that we re-

view de novo. Unwired Planet, LLC v. Google Inc., 841 F.3d

1376, 1379 (Fed. Cir. 2016). “In statutory construction, we

begin ‘with the language of the statute.’” Kingdomware

Techs., Inc. v. United States, 136 S. Ct. 1969, 1976 (2016)

(quoting Barnhart v. Sigmon Coal Co., 534 U.S. 438, 450

(2002)). Our “first step ‘is to determine whether the lan-

guage at issue has a plain and unambiguous meaning with

regard to the particular dispute in the case.’” Barnhart,

534 U.S. at 450 (quoting Robinson v. Shell Oil Co., 519 U.S.

337, 340 (1997)). “It is a ‘fundamental canon of statutory

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 11

construction that the words of a statute must be read in

their context and with a view to their place in the overall

statutory scheme.’” Food & Drug Admin. v. Brown & Wil-

liamson Tobacco Corp., 529 U.S. 120, 133 (2000) (quoting

Davis v. Mich. Dep’t of Treasury, 489 U.S. 803, 809 (1989)).

2

35 U.S.C. § 315 governs the relationship between IPRs

and other proceedings. Sections 315(b) and (c) recite:

(b) Patent Owner’s Action.—An inter partes re-

view may not be instituted if the petition request-

ing the proceeding is filed more than 1 year after

the date on which the petitioner, real party in in-

terest, or privy of the petitioner is served with a

complaint alleging infringement of the patent. The

time limitation set forth in the preceding sentence

shall not apply to a request for joinder under sub-

section (c).

(c) Joinder.—If the Director institutes an inter

partes review, the Director, in his or her discretion,

may join as a party to that inter partes review any

person who properly files a petition under section

311 that the Director, after receiving a preliminary

response under section 313 or the expiration of the

time for filing such a response, determines war-

rants the institution of an inter partes review un-

der section 314.

Windy City argues that § 315(c) does not authorize

same-party joinder and also that it does not authorize join-

der of new issues material to patentability, such as new

claims or new grounds. Facebook disputes both points, ar-

guing that § 315(c) authorizes same-party joinder and that

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12 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

it does not prohibit joinder of new issues. 4 Both Windy City

and Facebook contend that the statute is clear and unam-

biguous in favor of their respective interpretations. See

Cross-Appellant’s Response Br. 40, 44; Appellant’s Reply

and Response Br. 28, 31.

We agree with Windy City on both points. The clear

and unambiguous text of § 315(c) does not authorize same-

party joinder, and does not authorize the joinder of new is-

sues.

Beginning with the statutory language, § 315(b) artic-

ulates the time-bar for when an IPR “may not be insti-

tuted.” 35 U.S.C. § 315(b). But § 315(b) includes a specific

4 Facebook also argues that Windy City waived its

arguments challenging the Board’s joinder decisions by

failing to raise them before the Board. But Windy City op-

posed Facebook’s motions for joinder, arguing that “[g]rant-

ing joinder would result in Facebook circumventing . . .

statutory limitations on petitioners, all within the Board’s

familiarity . . . .” J.A. 7371, 8147. The Board was quite fa-

miliar with the issue, as evidenced by the concurring opin-

ion, where two APJs expressed the view that Ҥ 315(c),

when properly interpreted, does not authorize same-party

joinder because a party cannot be joined to a proceeding ‘as

a party’ if it already is a party to that proceeding.”

J.A. 7401, 8174. The concurring opinion also noted its “dis-

agreement with the Director’s interpretation” of § 315(c)

permitting same-party joinder. J.A. 7401, 8174–75. More-

over, Windy City sought a writ of mandamus challenging

the joinder decisions, which we denied while noting that “it

is clear that Windy City will have an opportunity in the

relatively near future to address its concerns through a re-

sponse or cross-appeal” in this case. In re: Windy City In-

novations, LLC, No. 18-102, ECF No. 19, at 3 (Fed. Cir.

2018) (per curiam). Windy City has not waived its right to

challenge the Board’s joinder decisions.

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 13

exception to the time bar. By its own terms, “[t]he time

limitation . . . shall not apply to a request for joinder under

subsection (c).” Id.; see also Click-To-Call Techs., LP v. In-

genio, Inc., YellowPages.com, LLC, 899 F.3d 1321, 1331

(Fed. Cir. 2018) (“Congress also demonstrated that it knew

how to provide an exception to the time bar by including a

second sentence in the provision: ‘The time limitation set

forth in the preceding sentence shall not apply to a request

for joinder under subsection (c).’” (quoting 35 U.S.C.

§ 315(b))), cert. granted in part sub nom, Dex Media, Inc. v.

Click-To-Call Techs., LP, 139 S. Ct. 2742 (2019).

The joinder provision, § 315(c), states: “If the Director

institutes an inter partes review, the Director, in his or her

discretion, may join as a party to that inter partes review

any person who properly files a petition under section 311

that the Director . . . determines warrants the institution

of an inter partes review under section 314.” 35 U.S.C.

§ 315(c). The plain language of § 315(c) indicates that the

exception to the time bar offered by the joinder provision

only applies if there is an instituted IPR, meaning that a

first petition must have been timely under § 315(b), among

other requirements. Subsection (c) then provides that after

an inter partes review has been instituted, the Director, in

his or her discretion, “may join” “as a party to that inter

partes review” “any person” who has filed “a petition under

section 311 that the Director . . . determines warrants the

institution of an inter partes review under section 314.”

35 U.S.C. § 315(c) (emphases added).

3

We first address whether the language of § 315(c) au-

thorizes same-party joinder, i.e., the joinder of a person as

a party to a proceeding in which it is already a party. As

an initial matter, however, we note that this is not what

the Board purported to be doing in the proceedings at issue.

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14 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

As described above, the plain language of § 315(c) al-

lows the Director “to join as a party [to an already insti-

tuted IPR] any person” who meets certain requirements.

35 U.S.C. § 315 (emphases added). When the Board insti-

tuted Facebook’s later petitions and granted its joinder mo-

tions, however, the Board did not purport to be joining

anyone as a party. Rather, the Board understood Facebook

to be requesting that its later proceedings be joined to its

earlier proceedings. J.A. 8163 (“Facebook filed a Motion for

Joinder . . . requesting that this proceeding by joined with

[its prior IPR]”). It granted this request accordingly.

J.A. 8172 (“Further Ordered that IPR2017-00709 is hereby

joined with IPR2016-01156”). In other words, an essential

premise of the Board’s decision was that § 315(c) authorizes

two proceedings to be joined, rather than joining a person

as a party to an existing proceeding.

That understanding of § 315(c) is contrary to the plain

language of the provision. Section 315(c) authorizes the

Director to “join as a party to [an IPR] any person who”

meets certain requirements, i.e., who properly files a peti-

tion the Director finds warrants the institution of an IPR

under § 314. No part of § 315(c) provides the Director or

the Board with the authority to put two proceedings to-

gether. That is the subject of § 315(d), which provides for

“consolidation,” among other options, when “[m]ultiple pro-

ceedings” involving the patent are before the PTO.

35 U.S.C. § 315.

The difference between joining two proceedings and

joining a person “as a party” is a matter of the plain mean-

ing of familiar legal terms. Courts construe legal terms in

a statute to have their customary, ordinary meaning in law

unless there is a strong reason to infer a departure from

that meaning. See, e.g., Microsoft Corp. v. i4i Ltd. Partner-

ship, 564 U.S. 91, 101 (2011) (“where Congress uses a com-

mon-law term in a statute, we assume the ‘term . . . comes

with a common law meaning, absent anything pointing an-

other way.’”). Facebook has not identified any customary,

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 15

ordinary usage of “joining a person as a party to a proceed-

ing” as referring to combining the proceedings, or any indi-

cation of a congressional intent to depart from the normal

usage that keeps these things distinct. Indeed, the statute

recognizes the difference by addressing joinder in § 315(c)

and consolidation in § 315(d). Counsel and judges in all

federal proceedings are familiar with this distinction. For

example, the difference between Federal Rules of Civil Pro-

cedure 19 and 20 (relating to joinder of persons), and Rule

42 (relating to consolidation of proceedings), generally par-

allels the difference between § 315(c) and § 315(d). Accord-

ingly, the unambiguous language of § 315(c) does not

provide for two proceedings to be joined, as the Board pur-

ported to order here.

We recognize that, notwithstanding the language it

used, the Board may have been intending to convey that it

was joining Facebook as a party to its previously instituted

IPRs, and not joining the IPR proceedings themselves. In

their concurrence, for example, APJs McKone and Lee re-

ferred to the majority opinion as “permitting a party to, es-

sentially, join to itself.” J.A. 7400. The parties themselves

appear to have interpreted the Board’s decision this way,

and have conducted this appeal accordingly. See, e.g.,

Cross-Appellant’s Response Br. 16 (“the Board . . . allowed

Facebook to join its own previously-filed IPRs”); Appel-

lant’s Reply and Response Br. 31 (“the Board . . . join[ed]

Facebook to the previously-instituted IPRs . . . so called

‘same-party’ joinder”).

Assuming that the Board in fact joined Facebook “as a

party” to its existing IPRs, the question before us is

whether § 315(c) authorizes a person to be joined as a party

to a proceeding in which it is already a party. The clear

and unambiguous language of § 315(c) confirms that it does

not. Subsection (c) allows the Director to “join as a party

to [an IPR] any person who” meets certain threshold re-

quirements. It would be an extraordinary usage of the

term “join as a party” to refer to persons who were already

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16 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

parties. Again, under the Federal Rules of Civil Procedure

for example, joinder of a person as a party is uniformly

about adding someone that is not already a party. We are

not aware of any legal context in which a person is permit-

ted to join “as a party” to a proceeding in which it is already

a party. Again, we must construe legal terms in a statute

to have their customary, ordinary meaning in law unless

there is a strong reason to infer a departure from that

meaning. See, e.g., Microsoft, 564 U.S. at 101. We see no

basis for inferring a departure in the present context.

We recognize that the Board’s Precedential Opinion

Panel analyzed this issue in Proppant Express Investments,

LLC v. Oren Technologies, LLC, No. IPR2018-00914, Paper

38 (P.T.A.B. Mar. 13, 2019), and came to the opposite con-

clusion. Id. at 5 (Ҥ 315(c) permits a petitioner to be joined

to a proceeding in which it is already a party.”). But that

conclusion, which allowed same-party joinder, is incorrect

under the unambiguous meaning of the statute. The

Board’s conclusion in Proppant hinged on the statute’s use

of the phrase “any person.” Id. The Board reasoned that

because the word “any” necessarily carries “an expansive

meaning,” the phrase “any person” provides the Director

with the authority, should he wish, to join “every person

who properly files a petition that warrants institution,” in-

cluding oneself. Id. at 5–6 (internal quotations and cita-

tions omitted). But the full phrase used by § 315(c) is that

the Director “may join as a party [to the IPR] any person”

who meets certain requirements (including, i.e., having its

own petition that warrants institution). The phrase “join

as a party to a proceeding” on its face limits the range of

“person[s]” covered to those who, in normal legal discourse,

are capable of being joined as a party to a proceeding (a

group further limited by the own-petition requirements),

and an existing party to the proceeding is not so capable.

A statute saying that “a person may marry any person who

is older than 16 . . . ” would not, by virtue of the “any per-

son” language, authorize marriage to oneself. The word

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 17

“marry” necessarily requires another person. The “join as

a party” language does the same here. A party cannot logi-

cally be “join[ed] as a party” in a proceeding if it is already

a party to that proceeding.

Accordingly, we hold that the clear and unambiguous

meaning of § 315(c) does not authorize joinder of two pro-

ceedings, and does not authorize the Director to join a per-

son to a proceeding in which that person is already a party.

4

The Board’s interpretation of § 315(c) is contrary to the

unambiguous meaning of the statute for a second reason.

Setting aside the question of same-party joinder, the lan-

guage in 315(c) does no more than authorize the Director

to join 1) a person 2) as a party, 3) to an already instituted

IPR. This language does not authorize the joined party to

bring new issues from its new proceeding into the existing

proceeding, particularly when those new issues are other-

wise time-barred. As discussed above, § 315(c) authorizes

joinder of a person as a party, not “joinder” of two proceed-

ings.

The strongest case that Facebook can make is that the

statute does not expressly prohibit the introduction of new

issues in the joined proceedings. Appellant’s Reply and Re-

sponse Br. 28 (“The statute . . . does not prohibit the con-

sideration of new claims or issues in the joined

proceedings.”); id. (“Nothing in this text states or implies

that when a person joins an instituted IPR, that person

cannot address any new claims or issues beyond the al-

ready-instituted IPR.”).

The lack of an express prohibition, however, does not

make § 315(c) ambiguous as to whether it permits joinder

of new issues. Rather, it simply permits the Director, at

his or her discretion, to join any person as a party to an

already-instituted IPR. The already-instituted IPR to

which a person may join as a party is governed by its own

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18 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

petition and is confined to the claims and grounds chal-

lenged in that petition. SAS Inst., Inc. v. Iancu, 138 S. Ct.

1348, 1356 (2018) (“[T]he petitioner’s petition, not the Di-

rector’s discretion, is supposed to guide the life of the liti-

gation.”); id. at 1355 (“Congress chose to structure a

process in which it’s the petitioner, not the Director, who

gets to define the contours of the proceeding.”). We there-

fore conclude that the unambiguous meaning of § 315(c) is

that it allows the Director discretion to join a person as a

party to an already instituted IPR but does not permit the

joined party to bring new issues from the newer proceeding

into the existing proceeding. Any other conclusion would

improperly join proceedings, rather than parties—which

§ 315(c) does not authorize.

Our interpretation of § 315(c) is also consistent with

the statutory scheme of § 315 as a whole, as illustrated by

the neighboring subsections. For example, as noted previ-

ously, § 315(d) specifically contemplates “consolidation” of

two proceedings and their respective issues. Section 315(d)

recites:

[D]uring the pendency of an inter partes review, if

another proceeding or matter involving the patent

is before the Office, the Director may determine the

manner in which the inter partes review or other

proceeding or matter may proceed, including

providing for . . . consolidation . . . of any such mat-

ter or proceeding.

35 U.S.C. § 315(d). This section thus authorizes consolida-

tion of, for example, multiple instituted (and therefore

timely) IPRs and the issues contained therein, even when

the issues may not be identical. There is a clear distinction

between § 315(c), which refers to the joinder of a person as

a party, and § 315(d), which refers to the consolidation of

multiple proceedings and the issues in each. Construing

§ 315(c) to permit joinder of proceedings, and all the new

issues therein, would render § 315(d) superfluous, which is

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 19

disfavored in statutory interpretation. See Marx v. Gen.

Revenue Corp., 568 U.S. 371, 386 (2013) (“[T]he canon

against surplusage is strongest when an interpretation

would render superfluous another part of the same statu-

tory scheme.”). Again, construing § 315(c) to allow unfet-

tered joinder of proceedings is inconsistent with all

common understandings of the terms “joinder” and “consol-

idation.”

Our interpretation is further supported by the legisla-

tive history of § 315(c). The final committee report states

that under § 315(c), “[t]he Director may allow other peti-

tioners to join an inter partes . . . review.” H.R. Rep.

No. 112-98, pt. 1, at 76 (2011), as reprinted in 2011

U.S.C.C.A.N. 67, 100 (emphasis added). Like the statutory

language itself, this contemplates allowing a person to join

an already-instituted IPR as a party but not to bring with

it its new issues. See Nidec, 868 F.3d at 1020 (Dyk, J., con-

curring).

Facebook too relies on the legislative history, arguing

that the following statement from Senator Kyl, particularly

the final sentence in the excerpt below, shows that § 315(c)

explicitly contemplates joinder of new issues:

Sections 315(c) and 325(c) allow joinder of inter

partes and post-grant reviews. The Office antici-

pates that joinder will be allowed as of right—if an

inter partes review is instituted on the basis of a

petition, for example, a party that files an identical

petition will be joined to that proceeding, and thus

allowed to file its own briefs and make its own ar-

guments. If a party seeking joinder also presents

additional challenges to validity that satisfy the

threshold for instituting a proceeding, the Office

will either join that party and its new arguments

to the existing proceeding, or institute a second

proceeding for the patent.

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20 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

157 Cong. Rec. S1360, S1376 (daily ed. Mar. 8, 2011) (state-

ment of Sen. Kyl). We disagree for at least three reasons.

First, the scenario described by Senator Kyl does not

apply to the situation at hand. One option described in the

final sentence is “to institute a second proceeding for the

patent,” which would require the second petition to be

timely filed. The scenario Senator Kyl describes therefore

assumes two timely-filed petitions. 5 Because Senator Kyl’s

statement refers to two timely-filed petitions, we do not

find it instructive for understanding Congress’ intent about

whether to allow joinder of new issues from a time-barred

petition.

Second, it is unclear which portions of Senator Kyl’s

statement refer to § 315(c) and which refer to § 325(c). The

final sentence regarding “additional challenges” may relate

to post-grant reviews under § 325(c), which is titled “join-

der” but expressly contemplates consolidation of issues

presented in multiple petitions. See 35 U.S.C. § 325(c) (“If

more than 1 petition for a post-grant review under this

chapter is properly filed against the same patent and the

Director determines that more than 1 of these petitions

warrants the institution of a post-grant review under sec-

tion 324, the Director may consolidate such reviews into a

single post-grant review.”).

Third, this single, ambiguous comment from one sena-

tor cannot override the final committee report, much less

the plain statutory language. See Garcia v. United States,

469 U.S. 70, 76 (1984) (“In surveying legislative history we

have repeatedly stated that the authoritative source for

finding the Legislature’s intent lies in the Committee Re-

5 As noted above, the proper mechanism for combin-

ing the issues raised in two timely-filed IPRs is consolida-

tion under § 315(d), not joinder under § 315(c).

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 21

ports on the bill, which ‘represen[t] the considered and col-

lective understanding of those Congressmen involved in

drafting and studying proposed legislation.’ We have es-

chewed reliance on the passing comments of one Member.”

(alteration in original) (citation omitted) (quoting Zuber v.

Allen, 396 U.S. 168, 186 (1969))); Milner v. Dep’t of Navy,

562 U.S. 562, 572 (2011) (“We will not . . . allow[] ambigu-

ous legislative history to muddy clear statutory lan-

guage.”).

Finally, Facebook argues that there are important pol-

icy rationales that run counter to our interpretation. Ap-

pellant’s Reply and Response Br. 37–38. Specifically,

Facebook argues that it was appropriate for the Board to

permit joinder given the unique facts of this case, where at

the end of the one-year time bar Windy City had not yet

identified which of the 830 claims of four patents it was

asserting against Facebook. Facebook submits that the

view we adopt today leaves a dangerous incentive for pa-

tent owners to file suit on patents containing hundreds of

claims and then “steadfastly delay[] the litigation through

various stalling tactics [and] . . . ‘run out the clock’ on the

one year bar under § 315(b) before identifying asserted

claims.” Id. at 37. This, according to Facebook, leaves ac-

cused infringers “stuck between a rock and a hard place”

with only two options: (1) file petitions addressing each of

the hundreds of claims; or (2) file petitions on a fraction of

the claims with the risk that the patent owner will assert

claims that were not covered by the petitions. Id. at 37–38.

We do not disagree with Facebook that the result in

this particular case may seem in tension with one of the

AIA’s objectives for IPRs “to provide ‘quick and cost effec-

tive alternatives’ to litigation in the courts.” PPC Broad-

band, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d

734, 741 (Fed. Cir. 2016) (emphasis added) (quoting H.R.

Rep. No. 112-98, pt. 1, at 48 (2011), as reprinted in 2011

U.S.C.C.A.N. 67, 78). Indeed, it is fair to assume that when

Congress imposed the one-year time bar of § 315(b), it did

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22 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

not explicitly contemplate a situation where an accused in-

fringer had not yet ascertained which specific claims were

being asserted against it in a district court proceeding be-

fore the end of the one-year time period. We also recognize

that our analysis here may lead defendants, in some cir-

cumstances, to expend effort and expense in challenging

claims that may ultimately never be asserted against

them.

Petitioners who, like Facebook, are faced with an enor-

mous number of asserted claims on the eve of the IPR filing

deadline, are not without options. As a protective measure,

filing petitions challenging hundreds of claims remains an

available option for accused infringers who want to ensure

that their IPRs will challenge each of the eventually as-

serted claims. An accused infringer is also not obligated to

challenge every, or any, claim in an IPR. Accused infring-

ers who are unable or unwilling to challenge every claim in

petitions retain the ability to challenge the validity of the

claims that are ultimately asserted in the district court. Ac-

cused infringers who wish to protect their option of pro-

ceeding with an IPR may, moreover, make different

strategy choices in federal court so as to force an earlier

narrowing or identification of asserted claims. Finally, no

matter how valid, “policy considerations cannot create an

ambiguity when the words on the page are clear.” SAS,

138 S. Ct. at 1358. That job is left to Congress and not to

the courts. See Lamie v. U.S. Tr., 540 U.S. 526, 542 (2004)

(“If Congress enacted into law something different from

what it intended, then it should amend the statute to con-

form it to its intent.”). In the meantime, we must abide by

the clear and unambiguous statutory language. 6

6 District courts may alleviate or altogether avoid

situations like this by adopting patent local rules or stand-

ing orders that require early identification of infringement

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 23

In sum, we conclude that the clear and unambiguous

language of § 315(c) does not authorize same-party joinder,

and also does not authorize joinder of new issues, including

issues that would otherwise be time-barred.

5

We now turn to the question of what, if any, deference

is owed to the PTO’s interpretation of § 315(c). Because we

conclude that the clear and unambiguous language of

§ 315(c) does not authorize same-party joinder or joinder of

new issues, we need not defer to the PTO’s interpretation

of § 315(c). See Chevron, U.S.A., Inc. v. Nat. Res. Def.

Council, Inc., 467 U.S. 837, 842–43 (1984) (“If the intent of

Congress is clear, that is the end of the matter; for the

court, as well as the agency, must give effect to the unam-

biguously expressed intent of Congress.”). “Even un-

der Chevron, we owe an agency’s interpretation of the law

no deference unless, after ‘employing traditional tools of

statutory construction,’ we find ourselves unable to discern

Congress’s meaning.” SAS, 138 S. Ct. at 1358 (quoting

Chevron, 467 U.S. at 843 n.9). As explained above, after

contentions. See, e.g., O2 Micro Int’l Ltd. v. Monolithic

Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006)

(“[T]he local rules in question are . . . designed specifically

to ‘require parties to crystallize their theories of the case

early in the litigation’ so as to ‘prevent the “shifting sands”

approach to claim construction.’” (quoting Atmel Corp. v.

Info. Storage Devices Inc., No. C 95-1987 FMS, 1998 WL

775115, at *2 (N.D. Cal. Nov. 5, 1998))). Indeed, most

courts with patent-heavy dockets have done just that, indi-

cating that the “policy” reasons used to justify such an odd

reading of the statutory scheme are less compelling than

Facebook contends.

Case: 18-1400 Document: 97 Page: 24 Filed: 03/18/2020

24 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

applying the traditional tools of statutory interpretation,

we are left with no ambiguity that could warrant deference.

6

In light of the foregoing, we hold that the Board’s join-

der decisions, which allowed Facebook to join itself to a pro-

ceeding in which it was already a party, and to add

otherwise time-barred issues to the IPRs, were improper

under § 315(c). 7 We therefore vacate-in-part the Board’s

final written decisions. Specifically, the Board’s final writ-

ten decision on the ’245 patent is vacated with respect to

claims 19 and 22–25, and the Board’s final written decision

on the ’657 patent is vacated with respect to claims 203,

209, 215, 221, 477, 482, 487, and 492, all of which were

added to the proceedings through improper joinder.

B

We now turn to the technical merits of this appeal and

review the Board’s obviousness determinations that are

not vacated based on our holding on joinder.

1

Obviousness is a question of law based on underlying

factual determinations. Belden Inc. v. Berk-Tek LLC, 805

F.3d 1064, 1073 (Fed. Cir. 2015). We review the Board’s

ultimate obviousness determination de novo and underly-

ing factual findings for substantial evidence. Harmonic

Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.

2016). Substantial evidence is “more than a mere scintilla”

and means “‘such relevant evidence as a reasonable mind

7 As noted above, to the extent the Board’s decision

could be read as having joined Facebook’s two IPR proceed-

ings, rather than having joined Facebook as a party to its

own existent proceeding, that was also improper and con-

trary to the unambiguous language of § 315(c).

Case: 18-1400 Document: 97 Page: 25 Filed: 03/18/2020

FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 25

might accept as adequate to support a conclusion.’” Biestek

v. Berryhill, 139 S. Ct. 1148, 1154 (2019) (quoting Consol.

Edison Co. v. NLRB, 305 U.S. 197, 229 (1938)). We review

the Board’s determination of the broadest reasonable inter-

pretation of the claim language de novo. Straight Path IP

Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1360 (Fed.

Cir. 2015). 8

2

We begin with the ’245 patent. As mentioned above,

the disputed claims of the ’245 patent relate to the ability

to handle “out-of-band” information (i.e., information that

a participator computer may not be able to present on its

own).

In its original, timely petition for IPR of the ’245 pa-

tent, Facebook challenged claims 1–15, 17, and 18. The

Board instituted review of claims 1–5, 7, and 9–14 based

on obviousness over Roseman, 9 Rissanen, 10 Vetter, 11

8 We note that the PTO has since changed the claim

construction standard used in IPR proceedings. See

37 C.F.R. § 42.100(b); Changes to the Claim Construction

Standard for Interpreting Claims in Trial Proceedings Be-

fore the Patent Trial and Appeal Board, 83 Fed. Reg.

51,340, 51,340 (Oct. 11, 2018). The new standard applies

only to petitions filed on or after November 13, 2018, and

therefore does not impact these IPRs, which were to be con-

strued using the broadest reasonable interpretation in

light of the specification. Cuozzo Speed Techs., LLC v. Lee,

136 S. Ct. 2131, 2146 (2016).

9 U.S. Patent No. 6,608,636 (J.A. 1195–227).

10 European Patent Application No. 0621532

(J.A. 1228–39).

11 Ronald J. Vetter, Videoconferencing on the Internet,

IEEE Computer Society 77–79 (Jan. 1995).

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26 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

Pike, 12 and Westaway; 13 and instituted review of claims 6,

8, 15, 17, and 18 based on obviousness over the same refer-

ences and Lichty. 14 As discussed above, claims 19 and 22–

25 were improperly added through joinder.

In its final written decision on the ’245 patent, the

Board held that Facebook had failed to show by a prepon-

derance of the evidence that claims 1–15, 17–19, and 22–

25 are unpatentable as obvious. ’245 Final Written Deci-

sion, at 34. Facebook appeals the Board’s determination

that these claims are not unpatentable as obvious. As pre-

viously discussed, joinder of claims 19 and 22–25 was im-

proper, so the final written decision is vacated with respect

to those claims. Here, we address remaining claims 1–15,

17, and 18.

The disputed limitation of claim 1 of the ’245 patent is:

the second of said participator computers inter-

nally determines whether or not the second of the

participator computers can present the communi-

cation, if it is determined that the second of the par-

ticipator computers can not present the

communication then obtaining an agent with an

ability to present the communication, and other-

wise presenting the communication independent of

the first of the independent participator computers

and the computer.

’245 patent at claim 1. Independent claim 7 recites sub-

stantially the same limitation as claim 1. See id. at claim

12 Mary Ann Pike et al., Using Mosaic (1994)

(J.A. 1246–397).

13 U.S. Patent No. 5,226,175 (J.A. 1398–408).

14 Tom Lichty, The Official America Online for Mac-

intosh Membership Kit & Tour Guide (2nd ed. 1994)

(J.A. 1409–529).

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 27

7. All of the remaining claims at issue depend from claim 1

or 7.

Facebook conceded before the Board that the primary

reference, Roseman, does not disclose the disputed limita-

tion. ’245 Final Written Decision, at 29 (“Indeed, Petitioner

admits that ‘Roseman does not appear to contemplate the

scenario in which the second participant computer inter-

nally determines that it cannot present the communi-

cation.’” (emphasis in original) (quoting J.A. 457

(Petition))). Facebook relied on Pike or, alternatively,

Westway to satisfy this limitation. Pike describes a system

where a user can manually search for and install software

to open a specific file type, and Westway describes a pro-

gram that automatically obtains a software to present a

communication if the program determines that it cannot.

See id. at 18–19.

The Board determined that Facebook failed to explain

“why a skilled artisan would have incorporated this feature

into Roseman’s local computers (participator computers) in

light of Roseman’s system, which processes images at the

host, not the local computers.” Id. at 29 (emphasis added).

The Board reasoned that:

The most logical reading of Roseman is that its lo-

cal computers already have software sufficient to

render the common image that the host provides to

them. Thus, Petitioner’s argument that Pike and

Westaway would have been applied because of the

possibility that a meeting participant would place

a document on the table that other participants

would not have the correct software to view is not

applicable to Roseman. Petitioner has not ex-

plained why, in the case where the host is unable

to present a communication received from a local

computer as part of its common image, a local com-

puter would make an internal determination to

that effect, or why users at the local computers

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28 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

would seek out software to present the communica-

tion.

Id. at 29–30 (citation omitted). In reaching this conclusion,

the Board considered Facebook’s expert’s testimony but de-

termined that it did not “add materially to Petitioner’s un-

persuasive attorney argument” because it “merely

repeat[ed] Petitioner’s argument, nearly verbatim, without

citation to the basis for his testimony.” Id. at 30. Substan-

tial evidence supports the Board’s assessment and weigh-

ing of this evidence, and we decline to reweigh the evidence

on appeal. See In re NTP, Inc., 654 F.3d 1279, 1292 (Fed.

Cir. 2011) (“This court does not reweigh evidence on ap-

peal, but rather determines whether substantial evidence

supports the Board’s fact findings.”).

On appeal, Facebook argues that the Board’s underly-

ing understanding of Roseman (that it processes images at

the host, not the local computers) was incorrect. As ex-

plained below, substantial evidence supports the Board’s

understanding of Roseman, which in turn supports its de-

termination that claim 1 would not have been obvious over

the asserted prior art.

Facebook argues that there are at least two instances

where Roseman processes images at the local participant

computers—the “note passing” feature and the “document

sharing” feature. Appellant’s Opening Br. 29–35. The

note-passing feature in Roseman allows a conference par-

ticipant to send a private note to another participant,

which only the recipient can view. Roseman explains that

“[w]hen the other party [recipient] sees the note on his pic-

ture, as in FIG. 12, he can drag it to a private viewing area,

double-click it, and read it. No other people are aware of

the passed note.” J.A. 1223, col. 9 ll. 28–31 (emphasis

added). The document sharing feature allows a participant

to drag a data file from outside the conference room window

onto the table of the conference room to share it with other

participants who can open it. These two features, Facebook

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 29

argues, show that Roseman generates images at the local

participant computers.

Facebook’s argument requires us to agree that the area

outside the virtual conference room of Roseman is outside

the software system of Roseman entirely, rather than just

outside the virtual meeting room. Referring to Figure 10

of Roseman below, Facebook’s position is that the area out-

side of the meeting room (everything except the box in the

bottom left corner) is outside of the Roseman software en-

tirely and is on the participants’ local desktops:

Appellant’s Opening Br. 29–30 (citing J.A. 1204, fig. 10).

Facebook cites no evidence supporting this position. With-

out any citation or support, Facebook simply equates the

area outside of the conference room with “the local com-

puter,” id. at 29, 31, or “the user’s desktop,” id. at 30.

As Windy City notes, there is substantial evidence to

support the understanding that the entire area shown in

Figure 10 is within the Roseman software system, with the

box in the bottom left corresponding to a specific meeting

room within the system. See Cross-Appellant’s Response

Br. 21–22. Roseman does not state that the area outside of

the meeting room in Figure 10 is “outside the system” or

“outside the software.” Roseman refers to this area outside

the meeting room as a “private viewing area.” J.A. 1223,

col. 9 ll. 28–31 (explaining that once “the other party sees

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30 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

the note on his picture, as in FIG. 12, he can drag it to a

private viewing area, double-click it, and read it”). Refer-

ring to this area as the “private viewing area” suggests that

this is still part of the Roseman system and that the host

can create the images seen in this private area rather than

the images being created locally.

Facebook’s position, which is based on attorney argu-

ment rather than evidence in the record, does not persuade

us that the Board’s understanding of Roseman’s system is

incorrect. It also does not undermine the substantial evi-

dence that supports the Board’s finding that claim 1 would

not have been obvious over the prior art of record. We

therefore affirm the Board’s holding that claims 1–15, 17,

and 18 of the ’245 patent are not unpatentable as obvious

over the asserted prior art.

The final written decision on the ’245 patent is there-

fore affirmed-in-part (claims 1–15, 17, and 18) and vacated-

in-part (claims 19 and 22–25).

3

We now turn to the ’657 patent. As mentioned above,

the ’657 patent relates generally to the “censorship” fea-

tures that control the dissemination of information among

participator computers.

In its original, timely petition for IPR of the ’657 pa-

tent, Facebook challenged claims 189, 334, 342, 348, 465,

580, 584, and 592. The Board instituted review of all of the

challenged claims based on obviousness over Roseman,

Rissanen, Vetter, Pike, and Lichty. As discussed above,

claims 203, 209, 215, 221, 477, 482, 487, and 492 were im-

properly added through joinder.

In its final written decision on the ’657 patent, the

Board held that Facebook had shown by a preponderance

of the evidence that claims 189, 334, 342, 348, 465, 477,

482, 487, 492, 580, 584, and 592 are unpatentable as obvi-

ous but had failed to show that claims 203, 209, 215, and

Case: 18-1400 Document: 97 Page: 31 Filed: 03/18/2020

FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 31

221 are unpatentable as obvious. ’657 Final Written Deci-

sion, at 56.

Facebook appeals the Board’s determination that

claims 203, 209, 215, and 221 are not unpatentable as ob-

vious. As previously discussed, joinder of each of these

claims was improper, so the final written decision is va-

cated with respect to those claims. We therefore do not ad-

dress the technical merits of Facebook’s appeal of these

claims.

Windy City’s cross-appeal challenges the Board’s deter-

mination that claims 189, 334, 342, 348, 465, 477, 482, 487,

492, 580, 584, and 592 are unpatentable as obvious. As

previously discussed, joinder of claims 477, 482, 487, and

492 was improper, so the final written decision is vacated

with respect to those claims. Here, we address remaining

claims 189, 334, 342, 348, 465, 580, 584, and 592.

The claims at issue recite a “database” that stores “to-

kens” (e.g., user identity information). Roseman teaches

the use of “keys” provided to users that enable users to ac-

cess a conference “room” through a “door” (i.e., using the

key to “open the door”). J.A. 1223, col. 9 ll. 34–48, 54–55,

col. 10 ll. 61–64. Roseman describes that each meeting

room “‘knows’ about each key and its invitation level.”

J.A. 1223, col. 9 ll. 49–51. However, the Board found that

Roseman does not explicitly describe the underlying struc-

ture that stores the keys in the conference system. ’657 Fi-

nal Written Decision, at 29–30. Facebook argued that

Rissanen teaches storing user authentication information,

such as user identity information and passwords, in a da-

tabase, and that such teaching would have been applicable

to the keys of Roseman. Id. at 30. The Board agreed and

found that “Rissanen teaches a database that stores data

with persistence and tools for interacting with the data-

base.” Id. at 31.

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32 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

The issue before the Board, therefore, was whether it

would have been obvious to combine Roseman and Ris-

sanen to store the keys in a “database,” as claimed. The

Board considered the evidence and concluded that the use

of a database, as described in Rissanen, “would be a

straightforward and predictable choice for storing Rose-

man’s keys.” Id.

In its cross-appeal, Windy City argues that the Board

erred in finding that it would have been obvious to combine

Roseman and Rissanen. Windy City argues that the

Board’s analysis was infected by hindsight and that it did

not adequately explain how someone skilled in the art

would build the combined Roseman and Rissanen system.

Cross-Appellant’s Response Br. 35–39; see also id. at 36 (ar-

guing that carrying out the combination “would take sub-

stantial creativity”); id. at 38 (arguing that the Board “does

not address the difficulty” of making this combination). We

find no legal error in these aspects of the Board’s obvious-

ness analysis.

As an initial matter, “[a] person of ordinary skill is also

a person of ordinary creativity, not an automaton,” so the

fact that it would take some creativity to carry out the com-

bination does not defeat a finding of obviousness. KSR Int’l

Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see

also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed.

Cir. 2016) (“The rationale of KSR does not support [the]

theory that a person of ordinary skill can only perform com-

binations of a puzzle element A with a perfectly fitting puz-

zle element B.”). The Board also correctly rejected Windy

City’s argument about the difficulty of physically creating

the combination, noting that Facebook was not arguing

that Rissanen’s database would be bodily incorporated into

Roseman’s system. ’657 Final Written Decision, at 35. Re-

gardless, “[t]he test for obviousness is not whether the fea-

tures of a secondary reference may be bodily incorporated

into the structure of the primary reference.” Allied Erecting

& Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d

Case: 18-1400 Document: 97 Page: 33 Filed: 03/18/2020

FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 33

1373, 1381 (Fed. Cir. 2016) (quoting In re Keller, 642 F.2d

413, 425 (C.C.P.A. 1981)).

The only remaining issue is whether the Board’s fac-

tual findings underpinning its determination are sup-

ported by substantial evidence. We hold that they are.

There is substantial evidence of record supporting the

Board’s finding that the use of a database “would be a

straightforward and predictable choice for storing Rose-

man’s keys.” ’657 Final Written Decision, at 31. For exam-

ple, Facebook’s expert Dr. Lavian testified that “[d]atabase

technologies predated the [challenged patents] by decades,

and it was known to use databases to store user identity

and authentication information (‘tokens’).” J.A. 6249, ¶ 51.

Dr. Lavian also explained why a person of skill in the art

would have been motivated to combine Roseman with Ris-

sanen, specifically that “[a] skilled artisan would under-

stand that the user identity and password information in

Rissanen is analogous to the ‘keys’ in Roseman, and would

be motivated to make this combination.” J.A. 6250, ¶ 52.

Substantial evidence supports the Board’s determination

that it would have been obvious to store the keys in Rose-

man in a database. We therefore affirm the Board’s hold-

ing that claims 189, 334, 342, 348, 465, 580, 584, and 592

of the ’657 patent are unpatentable as obvious over the as-

serted prior art.

The final written decision on the ’657 patent is there-

fore affirmed-in-part (claims 189, 334, 342, 348, 465, 580,

584, and 592) and vacated-in-part (claims 203, 209, 215,

221, 477, 482, 487, and 492).

4

We next address the ’552 patent, which also relates

generally to “censorship” features.

Facebook’s petition for IPR challenged claims 1–61 and

64 of the ’552 patent. The Board instituted review of claims

Case: 18-1400 Document: 97 Page: 34 Filed: 03/18/2020

34 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

1–59 and 64 based on obviousness over Roseman, Ris-

sanen, Vetter, Pike, and Lichty. The Board did not insti-

tute review of claims 60 and 61. 15

In its final written decision on the ’552 patent, the

Board held that Facebook had shown by a preponderance

of the evidence that claims 2, 3, 5, 7, 10–17, 59, and 64 are

unpatentable as obvious but had failed to show that claims

1, 4, 6, 8, 9, and 18–58 are unpatentable as obvious. ’552

Final Written Decision, at 59.

Facebook appeals the Board’s determination that

claims 1, 4, 6, 8, 9, and 18–58 are not unpatentable as ob-

vious. Facebook’s argument focuses on the following “au-

thorization step” of claim 1:

the controller computer system controlling real-

time communications by:

storing each said user identity and a respective au-

thorization to send multimedia data, the multime-

dia data comprising graphical data; and

if permitted by the user identity corresponding to

one of the participator computers, allowing the one

of the participator computers to send multimedia

data to another of the participator computers.

’552 patent at claim 1.

Before the Board, Facebook argued that these authori-

zation limitations were satisfied by Roseman, which de-

scribes using stored keys, associated with user identities,

for controlling admission to a particular conference.

’552 Final Written Decision, at 53. Facebook argued that

the authorization limitation was satisfied by Roseman be-

cause a user who is not authorized to access a room could

not send multimedia data to conference room participants.

15 See supra note 3.

Case: 18-1400 Document: 97 Page: 35 Filed: 03/18/2020

FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 35

The Board rejected this argument and determined that

Roseman only describes a key granting a user admission to

a virtual conference room and does not describe keys as de-

termining what a user can do in a conference room once

admitted. Id. The Board reasoned that “it does not follow

that the key [of Roseman] provides permissions for behav-

ior within a conference room, such as authorization to send

multimedia data.” Id.; see also id. (“We are not persuaded

that such a key [granting access to a conference room] con-

stitutes stored authorization to engage in certain activities

once admitted.”).

Case: 18-1400 Document: 97 Page: 36 Filed: 03/18/2020

36 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

On appeal, Facebook argues that the Board erred by

narrowly construing the authorization limitations to re-

quire determining what a user can do in a conference room,

not just whether they should be admitted. Appellant’s

Opening Br. 42–44. We do not think the Board erred in its

claim construction. Most importantly, the Board’s con-

struction is supported by the intrinsic evidence, including

Figure 3 (below), which describes checking the user’s per-

mission prior to authorizing the user to send multimedia

data.

’552 patent at fig. 3 (highlighting added) (Block 50),

col. 6 ll. 20–23 (“the logic flows to Block 50, which tests

Case: 18-1400 Document: 97 Page: 37 Filed: 03/18/2020

FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 37

whether a user has post permission. If the user has post

permission, the logic flows to Block 48”).

Under the Board’s construction, which we think is cor-

rect, the Board’s determination that Roseman does not sat-

isfy this limitation is supported by substantial evidence.

As described above, the Board considered and rejected Fa-

cebook’s arguments and determined that Roseman only de-

scribes a key granting a user admission to a virtual

conference room and did not describe keys as determining

what a user can do in a conference room once admitted.

’552 Final Written Decision, at 53. This determination is

supported by substantial evidence, including the disclosure

of Roseman itself. See id. (citing J.A. 1223 col. 9 ll. 34–55,

col. 10 ll. 61–65). And, like the Board, we are also not per-

suaded that a key that grants admission also includes an

authorization to send multimedia data in a conference

room. See id. We therefore affirm the Board’s holding that

claims 1, 4, 6, 8, 9 and 18–58 of the ’552 patent are not un-

patentable as obvious over the asserted prior art.

Windy City’s cross-appeal challenges the Board’s deter-

mination that claims 2, 3, 5, 7, 10–17, 59, and 64 are un-

patentable as obvious. Windy City makes the same

argument it made for the ’657 patent—that it would not

have been obvious to combine Roseman and Rissanen. For

the same reasons explained above with respect to the

’657 patent, substantial evidence supports the Board’s

finding that it would have been obvious to combine Rose-

man and Rissanen to arrive at the claimed invention of the

’552 patent. We therefore affirm the Board’s holding that

claims 2, 3, 5, 7, 10–17, 59, and 64 of the ’552 patent are

unpatentable as obvious over the asserted prior art.

The final written decision on the ’552 patent is there-

fore affirmed.

Case: 18-1400 Document: 97 Page: 38 Filed: 03/18/2020

38 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

5

Finally, we address the ’356 patent, which also relates

generally to “censorship” features.

Facebook’s petition for IPR challenged claims 1–9, 12,

14–28, 31, and 33–37 of the ’356 patent. The Board insti-

tuted review of claims 1–5, 8, 9, 12, 14–16, 19–24, 27, 28,

31, 33–35, and 37 based on obviousness over Roseman, Ris-

sanen, and Vetter; claims 6, 7, 17, 26, and 36 based on ob-

viousness over Roseman, Rissanen, Vetter, and Pike;

claims 18 and 25 based on obviousness over Westaway; and

claims 6, 8, 15, 17, and 18 based on obviousness Roseman,

Rissanen, Vetter, and Gosling. 16

In its final written decision on the ’356 patent, the

Board held that Facebook had shown by a preponderance

of the evidence that claims 1–9, 12, 15–28, 31, and 34–37

are unpatentable as obvious but had failed to show that

claims 14 and 33 are unpatentable as obvious. ’356 Final

Written Decision, at 59.

Facebook appealed the Board’s determination that

claims 14 and 33 were not unpatentable as obvious. How-

ever, claims 14 and 33 were found unpatentable by the

Board in a separate IPR from which Windy City voluntarily

dismissed its appeal. See Windy City Innovations, LLC v.

Facebook Inc., No. 18-1543, ECF No. 24, at 1–2 (Fed. Cir.

May 14, 2018) (dismissing appeal of No. IPR2016-01067).

Windy City argued that Facebook’s appeal regarding

claims 14 and 33 of the ’356 patent is moot. Cross-Appel-

lant’s Response Br. 5 n.1. Facebook agreed. Appellant’s

Reply and Response Br. 20 (“Facebook concurs that its ap-

peal on claims 14 and 33 of the ’356 patent is moot because

16 James Gosling, Java Intermediate Bytecodes, ACM

SIGPLAN Workshop on Intermediate Representations

(Jan. 1995).

Case: 18-1400 Document: 97 Page: 39 Filed: 03/18/2020

FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 39

those claims are finally invalid.”). We agree that Face-

book’s appeal of the final written decision on the ’356 pa-

tent is moot, dismiss that portion of Facebook’s appeal, and

therefore do not address claims 14 and 33.

Windy City’s cross-appeal challenges the Board’s deter-

mination that claims 1–9, 12, 15–28, 31, and 34–37 are un-

patentable as obvious. Windy City makes the same

argument it made for the ’657 patent—that it would not

have been obvious to combine Roseman and Rissanen. For

the same reasons explained above with respect to the

’657 patent, substantial evidence supports the Board’s

finding that it would have been obvious to combine Rose-

man and Rissanen to arrive at the claimed invention of the

’356 patent. We therefore affirm the Board’s holding that

claims 1–9, 12, 15–28, 31, and 34–37 of the ’356 patent are

unpatentable as obvious over the asserted prior art.

The final written decision on the ’356 patent is there-

fore affirmed-in-part (claims 1–9, 12, 15–28, 31, and 34–

37).

6

We have considered the parties’ remaining arguments

on the technical merits of the appeal and cross-appeal and

find them unpersuasive.

III

We hold that the clear and unambiguous language of

§ 315(c) does not authorize same-party joinder or joinder of

new issues. The Board’s joinder decisions in this case,

which allowed Facebook to add otherwise time-barred is-

sues to its IPRs, were therefore improper under § 315(c).

We accordingly vacate the Board’s final written decisions

with respect to the claims improperly added through join-

der. We also hold that substantial evidence supports the

Board’s obviousness determinations.

Case: 18-1400 Document: 97 Page: 40 Filed: 03/18/2020

40 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

In sum, the Board’s final written decision on the

’245 patent is affirmed with respect to claims 1–15, 17, and

18 and vacated with respect to claims 19 and 22–25. The

Board’s final written decision on the ’657 patent is affirmed

with respect to claims 189, 334, 342, 348, 465, 580, 584, and

592 and vacated with respect to claims 203, 209, 215, 221,

477, 482, 487, and 492. The Board’s final written decision

on the ’552 patent is affirmed. The Board’s final written

decision on the ’356 patent is affirmed with respect to

claims 1–9, 12, 15–28, 31, and 34–37. Facebook’s appeal of

the Board’s final written decision on the ’356 is dismissed

as moot with respect to claims 14 and 33.

AFFIRMED-IN-PART, VACATED-IN-PART,

DISMISSED-IN-PART

COSTS

The parties shall bear their own costs.

Case: 18-1400 Document: 97 Page: 41 Filed: 03/18/2020

United States Court of Appeals

for the Federal Circuit

______________________

FACEBOOK, INC.,

Appellant

v.

WINDY CITY INNOVATIONS, LLC,

Cross-Appellant

______________________

2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537,

2018-1540, 2018-1541

______________________

Appeals from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in Nos. IPR2016-

01156, IPR2016-01157, IPR2016-01158, IPR2016-01159,

IPR2017-00659, IPR2017-00709.

______________________

Additional views by PROST, Chief Judge, PLAGER and

O’MALLEY, Circuit Judges.

The majority opinion concludes that the clear and un-

ambiguous language of 35 U.S.C. § 315(c) does not author-

ize same-party joinder and does not authorize joinder of

new issues. Because the opinion concludes that § 315(c) is

unambiguous, the majority does not address the question

of what, if any, deference is owed to the PTO’s interpreta-

tion of § 315(c) by the Board’s Precedential Opinion Panel

(“POP”) in Proppant Express Investments, LLC v. Oren

Technologies, LLC, No. IPR2018-00914, Paper 38 (P.T.A.B.

Mar. 13, 2019).

Case: 18-1400 Document: 97 Page: 42 Filed: 03/18/2020

2 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

Contrary to our conclusions, however, both parties con-

tend that a proper reading of § 315(c) unambiguously sup-

ports their respective—dramatically opposing—views of

how the provision operates. Logically, while they do not

say so expressly, the implication of their disagreement is

that there is ambiguity in the statute that we do not per-

ceive. Given this, and in light of the extensive attention

the parties gave to the issue of deference, we address what

our alternative holding would be if § 315(c) were deemed

ambiguous.

Facebook argues that the POP opinion in Proppant de-

serves Chevron deference, see Chevron, U.S.A., Inc. v. Nat-

ural Resources Defense Council, Inc., 467 U.S. 837 (1984),

or at least Skidmore deference, see Skidmore v. Swift & Co.,

323 U.S. 134, 140 (1944), and that we should, thus, defer

to the conclusion in the opinion that joinders like those at

issue in this case are permissible. The government, follow-

ing oral argument in this case and upon our request for its

views, filed a brief likewise arguing for Chevron, or at least

Skidmore, deference for the Board’s interpretation of

§ 315(c). Having considered these arguments, we conclude

that, were the statute ambiguous, we would alternatively

resolve this matter in the same way. Specifically, we would

find that no deference is due to the POP opinion in Prop-

pant and that the most reasonable reading of § 315(c) is the

one we adopt in our majority opinion.

I

At the time of the principal briefing in this appeal, dif-

ferent panels of the Board had issued conflicting nonprece-

dential decisions on the proper interpretation of § 315(c).

Compare, e.g., Target Corp. v. Destination Maternity,

Corp., No. IPR2014-00508, Paper 28, at 6–17 (P.T.A.B.

Feb. 12, 2015) (over dissenting opinion, permitting same-

party joinder and joinder of new issues), with SkyHawke

Techs., LLC v. L&H Concepts, LLC, No. IPR2014-01485,

Paper 13, at 3–4 (P.T.A.B. Mar. 20, 2015) (rejecting same-

Case: 18-1400 Document: 97 Page: 43 Filed: 03/18/2020

FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 3

party joinder and joinder of new issues), and Proppant Ex-

press Invs., LLC v. Oren Techs., LLC, No. IPR2018-00914,

Paper 21, at 4–6 (P.T.A.B. Nov. 8, 2018) (rejecting same-

party joinder and joinder of new issues). As explained

above, the Board in this case, over the “concerns” of the

concurring APJs who expressed their “disagreement with

the Director’s interpretation,” permitted Facebook to join

itself as a party to the already instituted IPRs and allowed

Facebook to join new claims to the proceedings. See Face-

book, Inc. v. Windy City Innovations, LLC, No. IPR2017-

00659, Paper 11 (P.T.A.B. July 31, 2017) (instituting IPR

and granting joinder); Facebook, Inc. v. Windy City Innova-

tions, LLC, No. IPR2017-00709, Paper 11 (P.T.A.B. August

1, 2017) (same).

In its principal briefing in this appeal, Facebook asked

us to give Chevron deference to the Board’s interpretation

of § 315(c) in this case. But Facebook cited no authority

that would support giving a nonprecedential Board deci-

sion Chevron deference. Indeed, we have never given such

nonprecedential Board decisions Chevron deference. See,

e.g., Power Integrations, Inc. v. Semiconductor Components

Indus., LLC, 926 F.3d 1306, 1318 (Fed. Cir. 2019) (“[W]e

decline to give Chevron deference to these nonprecedential

Board decisions, which do not even bind other panels of the

Board.”); see also United States v. Mead Corp., 533 U.S.

218, 230–31 (2001).

In September 2018, while this appeal was pending, the

Director outlined new procedures to create and govern the

POP. The POP’s purpose is to “establish binding agency

authority concerning major policy or procedural issues, or

other issues of exceptional importance in the limited situa-

tions where it is appropriate to create such binding agency

authority through adjudication before the Board.” Patent

Trial and Appeal Board, Standard Operating Procedure 2

(Rev. 10), at 3 (Sept. 20, 2018) (hereinafter “SOP 2”),

Case: 18-1400 Document: 97 Page: 44 Filed: 03/18/2020

4 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

https://www.uspto.gov/sites/default/files/docu-

ments/SOP2%20R10%20FINAL.pdf. 1

After the principal briefing was completed, but before

we heard oral argument in this appeal, the Director con-

vened a POP in Proppant to address the following issues:

1. Under 35 U.S.C. § 315(c) may a petitioner be

joined to a proceeding in which it is already a

party?

2. Does 35 U.S.C. § 315(c) permit joinder of new is-

sues into an existing proceeding?

3. Does the existence of a time bar under 35 U.S.C.

§ 315(b), or any other relevant facts, have any im-

pact on the first two questions?

Proppant Express Invs., LLC v. Oren Techs., LLC,

No. IPR2018-00914, Paper 24, at 2 (P.T.A.B. Dec. 3, 2018).

In Proppant, the POP held that § 315(c) “provides discre-

tion to allow a petitioner to be joined to a proceeding in

which it is already a party and provides discretion to allow

joinder of new issues into an existing proceeding.” Prop-

pant Express Invs., LLC v. Oren Techs., LLC, No. IPR2018-

00914, Paper 38, at 4 (P.T.A.B. Mar. 13, 2019). The POP

also stated that “the Board will exercise this discretion only

in limited circumstances—namely, where fairness requires

it and to avoid undue prejudice to a party.” Id. For exam-

ple, the POP stated that the Board may exercise this dis-

cretion based on “actions taken by a patent owner in a co-

1 The POP is made up of three members of the Board.

By default, the three members are the Director, the Com-

missioner for Patents, and the PTAB Chief Judge. The Di-

rector may replace the default members with the Deputy

Director, the Deputy Chief Judge, or an Operational Vice

Chief Judge and may determine that a panel of more than

three members is appropriate. SOP 2, at 4.

Case: 18-1400 Document: 97 Page: 45 Filed: 03/18/2020

FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 5

pending litigation such as the late addition of newly as-

serted claims.” Id.

Following Proppant, Facebook filed a notice of supple-

mental authority identifying the POP opinion and arguing

that it deserved Chevron deference. Facebook, Inc. v.

Windy City Innovations, LLC, No. 18-1400, ECF No. 56, at

1–2 (Fed. Cir. Mar. 20, 2019) (“The PTO’s precedential stat-

utory interpretation of § 315(c)—provided after notice, pub-

lic comment, and hearing—is entitled to Chevron deference

to the extent the Court finds textual ambiguity.”). Windy

City did not respond to Facebook’s notice of supplemental

authority.

After oral argument in this appeal, we invited the Di-

rector, who had not intervened in the case, to file a brief

expressing his views on “what, if any, deference should be

afforded to decisions of a Patent Trial and Appeal Board

Precedential Opinion Panel (‘POP’), and specifically to the

POP opinion in Proppant Express Investments, LLC v. Oren

Technologies, LLC, No. IPR2018-00914, Paper 38 (P.T.A.B.

Mar. 13, 2019).” Facebook, Inc. v. Windy City Innovations,

LLC, No. 18-1400, ECF No. 64, at 1–2 (Fed. Cir. Aug. 12,

2019) (per curiam). The government filed a brief in re-

sponse, both Facebook and Windy City replied, and two

amici filed briefs on the issue. Facebook, Inc. v. Windy City

Innovations, LLC, No. 18-1400, ECF Nos. 76 (government),

79, 90 (amici), 91 (Facebook), 92 (Windy City).

In its response, the government argued that POP opin-

ions interpreting the AIA, including Proppant, are entitled

to Chevron, or at least Skidmore, deference. Facebook

agreed with the government’s position on deference.

Windy City argued that POP opinions, including Proppant,

are not entitled to any deference, as did the non-govern-

ment Amici.

Case: 18-1400 Document: 97 Page: 46 Filed: 03/18/2020

6 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

II

We apply Chevron deference to an agency’s implemen-

tation of a particular statutory provision only “when it ap-

pears that Congress delegated authority to the agency

generally to make rules carrying the force of law, and that

the agency interpretation claiming deference was promul-

gated in the exercise of that authority.” Mead, 533 U.S. at

226–27. The Supreme Court has stated that “a very good

indicator of delegation meriting Chevron treatment in [sic,

*is] express congressional authorizations to engage in the

process of rulemaking or adjudication that produces regu-

lations or rulings for which deference is claimed.” Id. at

229.

In the AIA, Congress delegated certain rulemaking au-

thority to the Director. Notably, such delegation specifi-

cally provides that the Director shall “prescribe

regulations.” 35 U.S.C. § 316(a). For example, § 316(a)(4)

recites that “[t]he Director shall prescribe regulations es-

tablishing and governing inter partes review under this

chapter and the relationship of such review to other pro-

ceedings under this title.” Id. at § 316(a)(4) (emphasis

added). And, related to joinder, § 316(a)(12) recites that

“[t]he Director shall prescribe regulations setting a time pe-

riod for requesting joinder under section 315(c).” Id. at

§ 316(a)(12) (emphasis added). 2

2 The PTO prescribed the following regulation set-

ting the time to file a request for joinder as one month after

the date of institution of the IPR for which joinder is re-

quested:

(b) Request for joinder. Joinder may be requested

by a patent owner or petitioner. Any request for

joinder must be filed, as a motion under § 42.22, no

later than one month after the institution date of

Case: 18-1400 Document: 97 Page: 47 Filed: 03/18/2020

FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 7

The express delegation of rulemaking authority, thus,

is for the Director to promulgate regulations governing the

conduct of IPRs. “[W]hen Congress expressly delegates to

the Director the ability to adopt legal standards and proce-

dures by prescribing regulations, the Director can only ob-

tain Chevron deference if it adopts such standards and

procedures by prescribing regulations.” See, e.g., Aqua

Prods., Inc. v. Matal, 872 F.3d 1290, 1334 (Fed. Cir. 2017)

(en banc) (Moore, J., concurring); see id. (“The Board may

adopt a legal standard through a precedential decision in

an individual case, but that legal standard will not receive

Chevron deference when Congress only authorized the

agency to prescribe regulations.”). There is no indication

in the statute that Congress either intended to delegate

broad substantive rulemaking authority to the Director to

interpret statutory provisions through POP opinions or in-

tended him to engage in any rulemaking other than

through the mechanism of prescribing regulations.

The AIA also includes an express delegation to the

Board to “conduct each inter partes review instituted under

this chapter.” 35 U.S.C. § 316(c). Critically, Congress’s

delegation in the AIA for the adjudication of patentability

in IPRs is not a delegation of authority to issue adjudica-

tive decisions interpreting statutory provisions of the AIA.

See Gonzales v. Oregon, 546 U.S. 243, 258 (2006) (“Chevron

deference . . . is not accorded merely because the statute is

ambiguous and an administrative official is involved. To

begin with, the rule must be promulgated pursuant to au-

thority Congress has delegated to the official.”); e.g., Mead,

533 U.S. at 231–32 (declining to give Chevron deference

any inter partes review for which joinder is re-

quested. The time period set forth

in § 42.101(b) shall not apply when the petition is

accompanied by a request for joinder.

37 C.F.R. § 42.122(b).

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8 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

when, “[o]n the face of the statute . . . the terms of the con-

gressional delegation give no indication that Congress

meant to delegate authority to . . . issue . . . rulings with

the force of law”). Thus, as with the Director, there is no

indication in the statute that Congress intended to dele-

gate authority to the Board to interpret statutory provi-

sions through generally applicable POP opinions and there

is nothing in the AIA that displaces our obligation under

the Administrative Procedure Act to review the Board’s le-

gal conclusions without deference to the trial forum. See

HTC Corp., ZTE (USA) v. Cellular Commc’ns Equip., LLC,

877 F.3d 1361, 1367 (Fed. Cir. 2017) (“Under the APA, we

review the Board’s legal conclusions de novo and its factual

findings for substantial evidence.”).

Notably absent from the AIA, accordingly, is any con-

gressional authorization, for either the Director or the

Board, to undertake statutory interpretation through POP

opinions. Thus, just as we give no deference to nonprece-

dential Board decisions, we see no reason to afford defer-

ence to POP opinions.

The government nonetheless argues that, because

“Congress has expressly delegated authority to adjudicate

IPRs” and to “enact regulations,” “both of the quintessen-

tial forms of lawmaking authority discussed in Mead, ‘ad-

judication [and] notice-and-comment rulemaking,’ are

present.” Thus, the government argues, the Board’s POP

opinion interpreting § 315(c) should be entitled to Chevron

deference. Facebook, Inc. v. Windy City Innovations, LLC,

No. 18-1400, ECF No. 76, at 6 (alteration in original). We

disagree.

According to the government, POP opinions are compa-

rable to processes employed by other adjudicative bodies

with rulemaking authority to which the Supreme Court

has afforded Chevron deference. But in each of the exam-

ples cited by the government, the statutory delegation of

authority is not analogous to the authority delegated by the

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 9

AIA. For example, in the context of the Board of Immigra-

tion Appeals, Congress has charged the Attorney General

with administering the Immigration and Nationality Act.

The statute specifically provides that “a ‘ruling by the At-

torney General with respect to all questions of law shall be

controlling.’” See Negusie v. Holder, 555 U.S. 511, 516–17

(2009) (quoting 8 U.S.C. § 1103(a)(1)). “The Attorney Gen-

eral, in turn, has delegated [its authority] to the BIA . . . in

the course of considering and determining cases before it.”

Id. at 517 (internal quotation marks omitted). In that con-

text, the Supreme court concluded that “the BIA should be

accorded Chevron deference as it gives ambiguous statu-

tory terms ‘concrete meaning through a process of case-by-

case adjudication.’” Id. (quoting I.N.S. v. Aguirre-Aguirre,

526 U.S. 415, 419 (1999)).

The government’s other examples also include broader

delegations of authority from Congress to the agency than

the AIA affords. See, e.g., Suprema, Inc. v. Int’l Trade

Comm’n, 796 F.3d 1338, 1345 (Fed. Cir. 2015) (noting that

“[t]here is no dispute that Congress has delegated author-

ity to the Commission to resolve ambiguity in Section 337

if the Commission does so through formal adjudicative pro-

cedures”); Holly Farms Corp. v. NLRB, 517 U.S. 392, 398–

99 (1996) (statutory grant in the National Labor Relations

Act, 29 U.S.C. § 156, grants the National Labor Relations

Board “authority from time to time to make, amend, and

rescind, in the manner prescribed by [the Administrative

Procedure Act], such rules and regulations as may be nec-

essary to carry out the provisions of this subchapter”); U.S.

Postal Serv. v. Postal Regulatory Comm’n, 599 F.3d 705,

710 (D.C. Cir. 2010) (finding that the statute “clearly dele-

gated to the Commission” the authority “to implement and

thereby to interpret” the statutory provision in question).

The organization of the PTO is not analogous to the

agencies in the examples cited by the government. Unlike

those examples, which have a single delegee with both rule-

making and adjudicatory powers, Congress organized the

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10 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

PTO with certain powers delegated to the Director, and

others delegated to the Board. See, e.g., 35 U.S.C. § 2 (del-

egating “specific powers” to the “Office,” subject to the Sec-

retary of Commerce), § 3 (vesting powers and duties of the

Office in the Director), § 6 (establishing the Board and de-

scribing its “[d]uties”). Most notably, and as discussed

above, in the AIA Congress expressly divided the delega-

tion of rulemaking and adjudicatory powers between the

Director and the Board. Congress delegated the power to

prescribe certain regulations to the Director, 35 U.S.C.

§ 316(a); see also id. at § 316(b), and delegated the power to

adjudicate IPRs to the Board, id. at § 316(c).

As the Supreme Court clarified in Martin v. Occupa-

tional Safety and Health Review Commission, 499 U.S. 144,

154 (1991), an agency with a bilateral structure differs

from an agency with a unilateral structure:

[I]n traditional agencies—that is, agencies pos-

sessing a unitary structure—adjudication operates

as an appropriate mechanism not only for factfind-

ing, but also for the exercise of delegated lawmak-

ing powers, including lawmaking by

interpretation. . . . because the unitary agencies in

question also had been delegated the power to

make law and policy through rulemaking.

Id. at 154 (emphasis added). Conversely, in agencies where

Congress has not expressly delegated both rulemaking and

adjudicative authority to a single delegee, as in the PTO,

adjudication may not operate as an appropriate mecha-

nism for the exercise of rulemaking. See id. at 154–55.

In light of the limited authority delegated by the AIA,

we decline to defer to the POP opinion on this issue of stat-

utory interpretation—a pure question of law that is not

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 11

within the specific expertise of the agency. 3 Aqua Prods.,

872 F.3d at 1320 (plurality opinion) (“Because Chevron def-

erence displaces judicial discretion to engage in statutory

interpretation, it requires a relatively formal expression of

administrative intent, one with the force and effect of

law.”); see also id. at 1324 (Moore, J., concurring) (“The

point of Chevron is to encourage courts to defer to agencies

on issues that ‘implicate[] agency expertise in a meaningful

way.’” (quoting Sandoval v. Reno, 166 F.3d 225, 239 (3d

Cir. 1999) (alteration in original)))); see also Kisor v. Wilkie,

139 S. Ct. 2400, 2414 (2019) (explaining that deference is

unwarranted “when a court concludes that an interpreta-

tion does not reflect an agency’s authoritative, expertise-

based, ‘fair[, or] considered judgment.’” (alteration in origi-

nal) (emphasis added) (quoting Auer v. Robbins, 519 U.S.

452, 462 (1997) (citing Mead, 533 U.S. at 229–31). The in-

terpretation of § 315(c) and the proper understanding of

the interplay between § 315(b) and (c) are pure questions

of law that do not implicate the PTO’s expertise. See id.

POP opinions, like all Board opinions, are subject to the

well-established standard of review directed by the APA.

Notably, the government refuses to address the question of

how far the position it takes on Chevron deference in this

case would extend into our review of interpretations of pa-

tentability provisions addressed in other POP opinions.

Facebook, Inc. v. Windy City Innovations, LLC, No. 18-

1400, ECF No. 76, at 5 n.2 (“[T]his brief does not address

whether the POP’s interpretations of patentability provi-

sions of the Patent Act, 35 U.S.C. §§ 101–105, would be

3 We have previously held that “an agency without

substantive rulemaking authority cannot claim Chevron

deference for statutory interpretations rendered in the

course of administrative proceedings.” Pesquera Mares

Australes Ltda. v. United States, 266 F.3d 1372, 1382 n.6

(Fed. Cir. 2001).

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12 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

entitled to Chevron deference.”). In our view, this is no

small matter.

Facebook also argues that the POP opinion in Proppant

is entitled to Chevron deference because it was “provided

after notice, public comment, and hearing.” Facebook, Inc.

v. Windy City Innovations, LLC, No. 18-1400, ECF No. 56,

at 2. The government elaborates on this point, contending

that the interpretation rendered in the POP opinion in

Proppant resulted from a “highly structured process,” “fol-

lowing notice to the public; . . . further written briefing by

the parties and six amici; and an oral hearing.” Facebook,

Inc. v. Windy City Innovations, LLC, No. 18-1400, ECF

No. 76, at 6.

To the extent that Facebook or the government argues

that this is comparable to notice-and-comment rulemak-

ing, we disagree. While the POP in Proppant issued an or-

der listing the issues it intended to review, solicited briefs

from the parties and amici, and held an oral hearing, the

POP procedure falls short of traditional notice-and-com-

ment rulemaking that could receive Chevron deference.

For example, the announcement that a POP has been

convened and the issues it will review is not published in

the Federal Register. Instead, it is issued as an order in

the docket of the case. See SOP 2, at 7 (“[T]he Precedential

Opinion Panel will enter an order notifying the parties and

the public when the Precedential Opinion Panel has been

designated and assigned to a particular Board case. The

order will further identify the issues the Precedential Opin-

ion Panel intends to resolve and the composition of the

panel.”). 4 There is no formal opportunity for public

4 The process for convening a POP is even less visible

to the public. The Director may convene a POP sua sponte.

A party to a proceeding or a member of the Board may also

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 13

comment. In fact, while the parties and amici were invited

to file briefs in Proppant, the POP is not required to invite

either. Id. (“[T]he Precedential Opinion Panel may request

additional briefing on identified issues, and, in appropriate

circumstances, may further authorize the filing of amicus

briefs.” (emphases added)).

Finally, POP opinions, once decided, are not published

in the Federal Register. Instead, they are “posted to the

Board’s Precedential Decisions Web page.” Id. at 8. As a

result, unlike final rules published in the Federal Register

that may be challenged by interested parties in court, see

5 U.S.C. § 553, there is no opportunity for amici—to the ex-

tent they were invited—to challenge the final POP decision

in court. Indeed, in a number of circumstances, including

where the parties have settled or a party does not have

standing to appeal, the POP decision may not be subject to

judicial review at all.

Issuing an order that a POP panel has been convened

in a particular case and soliciting amicus briefs is not

equivalent in form or substance to traditional notice-and-

comment rulemaking. See, e.g., Mead, 533 U.S. at 231, 233

(denying Chevron deference to Customs’ Classifications

rulings, in which Customs “does not generally engage in

notice-and-comment practice when issuing them,” and de-

scribing Customs’ practice in making them as “present[ing]

a case far removed . . . from notice-and-comment process”).

It is, instead, similar to what courts regularly do when

seeking input which may help inform their adjudicatory

function. Nor is the precedential value of POP opinions a

sufficient reason to afford Chevron deference. Id. at 232

(“[P]recedential value alone does not add up to Chevron en-

titlement.”). The fact that legal determinations may be

recommend POP review by sending an email to the Board.

See SOP 2, at 5–6.

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14 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC

binding on future Board panels does not enhance the

standing of that determination when reviewed on appeal.

The law has long been clear that the Director has no

substantive rule making authority with respect to interpre-

tations of the Patent Act. Cooper Techs. Co. v. Dudas, 536

F.3d 1330, 1336 (Fed. Cir. 2008). The Board, similarly, his-

torically has been given adjudicatory authority—similar to

that given to courts—to decide the issues presented to it.

The Director’s new delegation of authority in the AIA to

establish procedures by regulation for the conduct of IPRs

does not confer new statutory interpretive authority to the

Board or change the standard under which we review their

conclusions. And, the Board’s authority to adjudicate IPRs

does not confer rulemaking authority upon the Director

that extends to all legal questions the Board adjudicates.

As noted above, the PTO’s structure has never been the

type of unitary structure at issue in the cases upon which

the government relies.

III

In just three sentences at the end of its brief, the gov-

ernment asks for Skidmore deference if we do not apply

Chevron deference. The government articulates the Skid-

more standard and includes a single sentence of explana-

tion of why it should apply. As an initial matter, such a

conclusory assertion with no analysis is insufficient to de-

velop and preserve the issue. See Trading Techs. Int’l, Inc.

v. IBG LLC, 921 F.3d 1378, 1385 (Fed. Cir. 2019) (citing

United States v. Great Am. Ins. Co. of N.Y., 738 F.3d 1320,

1328 (Fed. Cir. 2013) (“It is well established that argu-

ments that are not appropriately developed in a party’s

briefing may be deemed waived.”)).

Nevertheless, in our view, Skidmore deference does not

apply. Under Skidmore, “‘[t]he weight [accorded to an ad-

ministrative] judgment in a particular case will depend

upon the thoroughness evident in its consideration, the va-

lidity of its reasoning, its consistency with earlier and later

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FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC 15

pronouncements, and all those factors which give it power

to persuade, if lacking power to control.” Mead, 533 U.S. at

228 (second alteration in original) (quoting Skidmore, 323

U.S. at 140). The considerations listed in Skidmore weigh

against affording deference here. For example, as ex-

plained in the majority opinion, we find the Director’s in-

terpretation of § 315(c) to be inconsistent with the plain

language of the statute and therefore unpersuasive. See

PhotoCure ASA v. Kappos, 603 F.3d 1372, 1376 (Fed. Cir.

2010) (“Even if some level of deference were owed to the

PTO’s interpretation, neither Chevron nor Skidmore per-

mits a court to defer to an incorrect agency interpreta-

tion.”); Aqua Prod., 872 F.3d at 1316 (“[D]eference to

misinterpretation of a statute is impermissible.”).

IV

In sum, even if § 315(c) were ambiguous—which it is

not—we would conclude in the alternative that on appeal

the PTO’s interpretation set forth in the POP opinion in

Proppant is not deserving either of Chevron or Skidmore

deference. We would then conclude—again in the alterna-

tive—that the most reasonable interpretation of § 315(c) is

the one we afford it in our majority opinion.