Federal Circuit offers guidance to patent challenges in Facebook case

In a decision clarifying the authority of the Patent Trial and Appeal Board, a federal appellate court ruled Facebook Inc. could not add claims it was challenging to its own petition at the patent office after the one-year deadline.

U.S. Court of Appeals for the Federal Circuit Chief Judge Sharon Prost concluded the board erred in allowing Facebook to join a petition to challenge additional claims in two of the patents. Facebook Inc. v. Windy City Innovations LLC, 2018-1400 (Fed Cir., filed March 18, 2020).

"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," Prost wrote for a three-judge panel.

The Federal Circuit decision will not directly affect the underlying patent infringement lawsuit in Oakland, where Facebook won a defense verdict in October.

Windy City Innovations LLC filed an appeal in November of U.S. District Judge Yvonne Gonzalez Rogers' judgment in the defendant's favor. Windy City Innovations LLC v. Facebook Inc., 16-CV01730 (N.D. Cal., filed April 6, 2016).

The litigation concerned patents related to methods for communicating over a computer-based network.

Cooley LLP partner Heidi L. Keefe, who represented Facebook both in the district court lawsuit and the Federal Circuit argument, declined to comment Monday. Facebook did not respond to emails seeking comment.

Vincent J. Rubino III of Brown Rudnick LLP, who represented Windy City Innovations at the Federal Circuit, also could not be reached.

In the Federal Circuit decision Monday, Prost affirmed decisions by the patent office determining multiple claims in several Windy City Innovations patents invalid while affirming others are valid.

-- Craig Anderson