On May 11, 2017, Facebook and WhatsApp filed an IPR petition on claims 1–8 of U.S. Patent No. 8,995,433 (“the ’433 patent”), which was later instituted (Case IPR2017-01427). On June 16, 2017, Facebook and WhatsApp filed a second IPR petition and a motion for joinder to an already instituted IPR proceeding challenging claims 1–6 and 8 of the ’433 patent (Case IPR2017-00225). Both parties were joined as petitioners in that proceeding. Subsequently, the PTAB issued a final written decision in Case IPR2017-00225, concluding that claims 1–6, and 8 of the ’433 patent were not shown to be unpatentable. The parties to Case IPR2017-01427—still pending in front of the Board—disputed whether Facebook and WhatsApp were estopped under 35 U.S.C. § 315(e)(1) from maintaining an IPR on the ’433 patent.
The PTAB began by noting that Facebook and WhatsApp were aware of the grounds asserted in IPR2017-01427 at the time they joined IPR2017-00225. The PTAB then addressed Facebook and WhatsApp’s argument that they should not be estopped following the Final Written Decision in IPR2017-00225 because the trial was already instituted when they joined and, therefore, they could not have raised the grounds asserted in IPR2017-01427 in that proceeding. The Board found Facebook and WhatsApp’s argument unpersuasive. The Board stated that the relevant question was whether Facebook and WhatsApp “did raise or reasonably could have raised the asserted grounds when [they] filed the motion to join IPR2017-00225.” While the Board recognized it would have been difficult to expand the scope of that proceeding in the motion to join, the petitioners had the option of requesting to consolidate the cases. The Board emphasized that, although they were not required to, the “petitioners chose to join IPR2017-00225, knowing the limited scope of the case.” The PTAB therefore dismissed Facebook and WhatsApp from the proceeding with respect to their challenge of claims 1-6 and 8 under § 315(e)(1).
The Board’s dismissal was only a partial one, however, because (i) Facebook and WhatsApp were not estopped from maintaining their challenge to claim 7 of the ’433 patent, which was not included in IPR2017-00225 and (ii) LG had joined Case IPR2017-01427 as a petitioner but was not subject to the estoppel on claims 1–6 and 8. The PTAB held that the “dismissal of Facebook and WhatsApp does not limit LG’s participation in any way” and allowed LG to “assume the role of challenger of all claims.” As to Facebook and WhatsApp’s participation, the PTAB held that they could “not participate in the proceeding to categorically challenge the unpatentability of claim 1, notwithstanding claim 7’s dependence from that claim.”
(Facebook, Inc., v. Uniloc USA, Inc., IPR2017-01427, Paper No. 30 (PTAB May 29, 2018)).