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Federal Circuit Throws Shade on Sologamy While Interpreting Section 315(c) Contrary to the Patent Trial and Appeal Board’s Precedential Opinion Panel

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In case your parlance needs updating, the term sologamy refers to a marriage to yourself. Apparently unaware of this trend, the Federal Circuit recently explained that “[a] statute saying that ‘a person may marry any person who is older than 16 . . . “would not, by virtue of the ‘any person’ language, authorize marriage to oneself. The word ‘marry’ necessarily requires another person.” Facebook, Inv. v. Windy City Innovations, LLC, No. 18-400, *16-17 (Fed. Cir. Mar. 18, 2020). Likewise, according to the Federal Circuit, the term “join as a party” also requires another party. Thus, a party cannot be logically joined as a party in a proceeding if it is already a party to that proceeding.

The Patent Trial and Appeal Board reached the opposite conclusion in its precedential decision in Proppant Express Investments, LLC v. Oren Technologies, LLC, which analyzed whether § 315(c) permits a petitioner to be joined to a proceeding in which it is already a party. See No. IPR2018-00914, Paper 38 (P.T.A.B. Mar. 13, 2019). Section 315(c) states that:

If the Director institutes an [IPR], the Director, . . . may join as a party to that [IPR] 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.

The Federal Circuit rejected the Board’s reasoning that the phrase “any person” encompasses every person, including oneself. Rather the range of persons is limited by the full-context of the phrase, “joined as a party,” so, as demonstrated by its marriage analogy, the unambiguous meaning of § 315(c) “does not authorize the Director to join a person to a proceeding in which that person is already a party.”

In connection with this statutory interpretation, the Federal Circuit also noted that the Board improperly purported to be joining together IPR proceedings, rather than persons. Section 315(c), however, does not authorize the Director or the Board to put two proceedings together. Such action may be proper under Section 315(d), which authorizes “consolidation,” among other options, when another matter involving the patent is before the Patent & Trademark Office. The Federal Circuit emphasized that “joinder” and “consolidation” are familiar legal terms with distinct purposes as seen, for example, in the Federal Rules of Civil Procedure: Rules 19 and 20 (relating to joinder of persons) and Rule 42 (relating to consolidation of proceedings). Accordingly, Section 315(c) is not the proper statutory vehicle to bring new issues from a different proceeding into an existing proceeding.

Finally, the panel comprising Chief Judge Prost and Circuit Judges Plager and O’Malley wrote separately to provide their additional views regarding the question of “what, if any, deference is owed to the PTO’s interpretation of § 315(c) by the Board’s Precedential Opinion Panel in Proppant.” The panel concluded that precedential opinions, like nonprecedential Board decisions, do not deserve Chevron deference because the Director and the Board lack congressional authorization to undertake statutory interpretation. Neither would the panel apply Skidmore deference because “the Director’s interpretation of § 315(c) [is] inconsistent with the plain language of the statute and therefore unpersuasive.”

What This Means for You

The statutory interpretation of § 315(c) became an issue because the Board granted Facebook’s motions for joinder of IPR petitions that challenged different claims of the same patents challenged in other petitions previously filed by Facebook. Facebook filed these follow-on petitions because the plaintiff had not disclosed its asserted claims prior to Facebook’s one-year time-bar under § 315(b). The Federal Circuit noted that, in such situations, accused infringers “who wish to protect their option of proceeding with an IPR may . . . make different strategy choices in federal court so as to force an earlier narrowing or identification of asserted claims.” To the extent the asserted claims are amended in a district court case after the one-year time-bar passes, an Accused Infringer will not have the option of seeking inter partes review.

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This information is provided by Vinson & Elkins LLP for educational and informational purposes only and is not intended, nor should it be construed, as legal advice.