Case: 18-1400   Document: 112     Page: 1   Filed: 09/04/2020




    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.
                  ______________________

             OPINION ISSUED: March 18, 2020
          OPINION MODIFIED: September 4, 2020 *
                 ______________________

     HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, argued
 for appellant. Also represented by ANDREW CARTER MACE,
 LOWELL D. MEAD, MARK R. WEINSTEIN; ELIZABETH



     *   This opinion has been modified and reissued fol-
 lowing a combined petition for panel rehearing and rehear-
 ing en banc filed by Appellant.
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 2               FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




 PRELOGAR, Washington, DC.          Also argued by PHILLIP
 EDWARD MORTON.

    VINCENT J. RUBINO, III, Fabricant LLP, New York, NY,
 argued for cross-appellant. Also represented by ALFRED
 ROSS FABRICANT, ENRIQUE WILLIAM ITURRALDE, PETER
 LAMBRIANAKOS.

     JEREMY COOPER DOERRE, Tillman Wright PLLC, Char-
 lotte, NC, as amicus curiae, pro se.

     JOSHUA KOPPEL, Appellate Staff, Civil Division, United
 States Department of Justice, Washington, DC, for amicus
 curiae United States. Also represented by JEFFREY ERIC
 SANDBERG, SCOTT R. MCINTOSH, ETHAN P. DAVIS; THOMAS
 W. KRAUSE, JOSEPH MATAL, FARHEENA YASMEEN RASHEED,
 MOLLY R. SILFEN, Office of the Solicitor, United States Pa-
 tent 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,
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 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC               3



 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
 ’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, granted Facebook’s motions for joinder, and termi-
 nated the new IPRs.
      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 late-filed petitions. Facebook
 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 its joinder decisions in allowing Facebook to
 join itself to a proceeding in which it was already a party,
 and also erred in allowing Facebook to add new claims to
 the IPRs through that joinder. Because joinder of the new
 claims was improper, we vacate the Board’s final written
 decisions as to those claims, but because we lack authority
 to review the Board’s institution of the two late-filed peti-
 tions, we remand to the Board to consider whether the ter-
 mination of those proceedings finally resolves them.
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 4              FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




     We also hold that the Board’s obviousness determina-
 tions on the originally instituted claims are supported by
 substantial evidence. We therefore affirm-in-part, vacate-
 in-part, and remand the Board’s final written decisions on
 the ’245 and ’657 patents, affirm the Board’s final written
 decision on the ’552 patent, and affirm-in-part the Board’s
 final written decision on the ’356 patent. We dismiss as
 moot Facebook’s appeal of the Board’s final written deci-
 sion 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
 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.




     1   For convenience, references to the specification cite
 only the ’245 patent.
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 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC                 5




 ’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.”

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-
 tent claims relate to the “censorship” features. These fea-
 tures are discussed in more detail in Part II.B when
 addressing the technical merits of the appeal and cross-ap-
 peal.
                                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
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 6              FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




 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
 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,



     2   The case management conference was ultimately
 held at a later date.
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 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC               7



 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
 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
 otherwise have been time-barred under 35 U.S.C. § 315(b),
 Facebook 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 instituted Facebook’s late-filed petitions
 and granted Facebook’s motions for joinder, allowing the


     3   The Board’s institution decisions were issued prior
 to the Supreme Court’s decision in SAS Institute, Inc. v.
 Iancu, 

(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, 

, 1357 (Fed. Cir. 2018).
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 8              FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




 newly challenged claims to be added to the proceedings.
 See J.A. 7385–402, 8162–76. In the same order, the Board
 also terminated the newly instituted proceedings.
 J.A. 7399, 8172.
     In considering whether to grant the motions for join-
 der, the Board reasoned that “although the newly chal-
 lenged 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 discov-
 ery. J.A. 7394, 8169. In addition, the Board determined
 that Facebook did not unduly delay in challenging the new
 claims in the second petitions filed with the motions for
 joinder. J.A. 7394–97, 8169–71. The Board agreed with
 Facebook that Windy City’s district court complaint gener-
 ally asserting the “claims” of the asserted patents “cannot
 reasonably be considered an allegation that Petitioner in-
 fringes 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 asserted 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 mo-
 tions for 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. Accordingly, 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
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 FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC              9



 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., 

(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, Pa-
 per 52, at 34 (P.T.A.B. Dec. 6, 2017) (“’245 Final Written
 Decision”).
      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”).
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  10            FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




      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
  ’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 appeals the Board’s
  joinder decisions, arguing that they were 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 Board’s joinder decisions
  raised in Windy City’s cross-appeal. We then turn to the
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC              11



  technical merits presented in Facebook’s appeal and Windy
  City’s cross-appeal.
                               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., 

, 1379 (Fed. Cir. 2016). “In statutory construction, we
  begin ‘with the language of the statute.’” Kingdomware
  Techs., Inc. v. United States, 

, 1976 (2016)
  (quoting Barnhart v. Sigmon Coal Co., 

, 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.’” 

(quoting Robinson v. Shell Oil Co., 

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

, 133 (2000) (quoting
  Davis v. Mich. Dep’t of Treasury, 

, 809 (1989)).
                               2
     35 U.S.C. § 315 governs the relationship between IPRs
  and other proceedings. Sections 315(b) and (c) recite:
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       (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.
                                 3
      As a threshold issue, Facebook and the United States
  Patent and Trademark Office (“PTO”) as amicus curiae ar-
  gue that we do not have jurisdiction to review the Board’s
  joinder decisions in this case. We disagree.
      Facebook and the PTO rely on 35 U.S.C. § 314(d),
  which provides that “[t]he determination by the Director to
  institute an inter partes review under this section shall be
  final and nonappealable.” In Cuozzo Technologies, LLC v.
  Lee, the Supreme Court held that § 314(d) overcomes the
  “strong presumption” favoring judicial review to preclude
  review of the Board’s institution decision where the
  grounds for attacking that decision “consist of questions
  that are closely tied to the application and interpretation
  of statutes related to the [PTO’s] decision to initiate inter
  partes review.” 

, 2140–41 (2016). Applying
  § 314(d) in Cuozzo, the Court specifically held that we may
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC               13



  not review an institution decision on the basis that the pe-
  tition did not satisfy the requirements of 35 U.S.C.
  § 312(a)(3), which states that the petition must identify the
  grounds of challenge “with particularity.”

2142. The
  Court explained that an argument that the “petition was
  not pleaded ‘with particularity’ under § 312 is little more
  than a challenge to the PTO’s conclusion, under § 314(a),
  that the ‘information presented in the petition’ warranted
  review.”

next considered § 314(d) in SAS
  Institute, Inc. v. Iancu, where it concluded that the statute
  does not preclude judicial review of the Board’s decision to
  institute fewer than all of the claims challenged in an IPR
  petition. 

, 1359–60 (2018). The Court ex-
  plained that while § 314(d) precludes review of whether
  there is a “reasonable likelihood that the claims are un-
  patentable on the grounds asserted,” the statute does not
  “enable the agency to act outside its statutory limits,” and
  thus, that § 314(d) does not preclude review where the
  agency has “exceeded [its] statutory authority.”

1359
  (internal citations omitted).
      More recently in Thyrv, Inc. v. Click-to-Call Technolo-
  gies, LP, the Supreme Court held that the PTO’s applica-
  tion of § 315(b)’s time bar is “closely related to its decision
  whether to institute inter partes review and is therefore
  rendered nonappealable by § 314(d).” 
140 S. Ct. 1367
, 1370
  (2020). The Court explained that § 315(b)’s “time limita-
  tion is integral to, indeed a condition on, institution” and
  concluded that “[a] challenge to a petition’s timeliness un-
  der § 315(b) thus raises ‘an ordinary dispute about the ap-
  plication of’ an institution-related statute.”
 

1373
  (quoting 
Cuozzo, 136 S. Ct. at 2139
). Furthermore, the
  Court distinguished SAS, explaining that unlike the issue
  in SAS, the review of a petition’s timeliness challenges
  “whether the agency should have instituted review at all,”
  not “the manner in which the agency’s review proceeds
  once instituted.”
 

1376.
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  14             FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




       According to Facebook, the Supreme Court’s decision
  in Thryv confirms that § 314(d) precludes review “of the
  PTO’s decision to institute a second IPR and join it to an
  existing IPR.” Appellant’s Supp. Br. 1. 4 In particular, Fa-
  cebook emphasizes that § 315(c) requires a request for join-
  der to be accompanied by a petition for IPR, and argues
  that therefore “Windy City’s attack on joinder is that the
  follow-on IPRs should not have been instituted at all.”
 

9, 11–12.
      The PTO similarly, though more narrowly, argues that
  “[a]t least where the Board institutes an inter partes re-
  view on a petition that would otherwise be untimely, the
  Board’s application of section 315(c) is ‘integral to, indeed
  a condition on, institution.’” PTO Supp. Br. 6. 5 The PTO,
  however, expressly states that:
       This case does not require the Court to address
       whether section 314(d) would bar review of a join-
       der decision when reversal would not have the ef-
       fect of reversing the [PTO’s] institution decision—
       for example, when the [PTO] grants the joinder mo-
       tion of a party who filed a petition within, rather
       than after, the one-year time limitation of section
       315(b).
  PTO Supp. Br. 11 n.1. Thus, the PTO does not argue that
  § 314(d) precludes judicial review of all Board joinder deci-
  sions, but instead argues that the statute precludes review
  where the petition filed with that request would otherwise
  have been untimely.




       4 “Appellant’s Supp. Br.” refers to Facebook’s supple-
  mental brief, ECF No. 107, filed June 10, 2020.
      5  “PTO Supp. Br.” refers to the PTO’s brief for the
  United States as amicus curiae, ECF No. 106, filed June
  10, 2020.
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC              15



       In contrast, Windy City argues that the Board’s joinder
  decisions in this case are “a separate procedural process
  with separate requirements and a different purpose than
  institution.” Appellee’s Supp. Br. 2. 6 Windy City further
  argues that its appeal of the Board’s joinder decisions in
  this case challenges whether the Board “exceeded the scope
  of its statutory authority under § 315(c) by granting Face-
  book’s motions for joinder.”
 Id. at 
1–2; see also
 

10.
  According to Windy City, like SAS, its appeal does not
  “challenge a conclusion by the Board that the requirements
  of initiating review under § 314 were satisfied,” but chal-
  lenges the Board’s joinder decisions in “already-instituted
  IPRs.”
 Id. at 
10. We agree with Windy City.
       To join a party to an instituted IPR, the plain language
  of § 315(c) requires two different decisions. First, the stat-
  ute requires that the Director (or the Board acting through
  a delegation of authority, see 37 C.F.R. §§ 42.4(a), 42.122))
  determine whether the joinder applicant’s petition for IPR
  “warrants” institution under § 314. We may not review
  this decision, whether for timeliness or to consider whether
  the petitioner is likely to succeed on the merits. See 
Thryv,
  140 S. Ct. at 1373 
(“[Section] 314(d) bars review at least of
  matters ‘closely tied to the application and interpretation
  of statutes related to’ the institution decision.” (quoting
  
Cuozzo, 136 S. Ct. at 2141
)).
      Second, to effect joinder, § 315(c) requires the Director
  to exercise his discretion to decide whether to “join as a
  party” the joinder applicant. That is, the statute requires
  the Director (or the Board on behalf of the Director) to
  make a “joinder decision.” See PTO Supp. Br. 10. The stat-
  ute makes clear that the joinder decision is made after a
  determination that a petition warrants institution, thereby
  affecting the manner in which an IPR will proceed. See


      6  “Appellee’s Supp. Br.” refers to Windy City’s sup-
  plemental brief, ECF No. 108, filed June 10, 2020.
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  16            FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




  
Thryv, 140 S. Ct. at 1377
. Thus, the joinder decision is a
  separate and subsequent decision to the intuition decision.
  Nothing in § 314(d), nor any other statute, overcomes the
  strong presumption that we have jurisdiction to review
  that joinder decision.
      In this case, Windy City’s cross-appeal does not chal-
  lenge the Board’s decision to institute Facebook’s follow-on
  petitions, but challenges whether the Board’s joinder deci-
  sions exceeded the statutory authority provided by
  § 315(c). Windy City’s appeal, therefore, is unlike the chal-
  lenges raised in Cuozzo and Thryv, which specifically
  sought review of petitions that the Board had instituted
  and the decisions to institute those petitions, which there-
  fore were barred by § 314(d). Instead, Windy City’s appeal
  of the Board’s joinder decisions is more like the reviewable
  challenge in SAS, which concerned whether the PTO had
  exceeded its statutory authority as to the manner in which
  the already-instituted IPR proceeded.
      Accordingly, we have jurisdiction to review the Board’s
  joinder decisions in this case to determine whether the
  Board (on behalf of the Director) acted outside any statu-
  tory limits under § 315(c).
                                4
       Because we have jurisdiction to review the Board’s
  joinder decisions in this case, we now turn to the merits of
  Windy City’s cross appeal. Windy City argues that § 315(c)
  does not authorize same-party joinder and also that it does
  not authorize joinder of new issues material to patentabil-
  ity, such as new claims or new grounds. Facebook disputes
  both points, arguing that § 315(c) authorizes same-party
  joinder and that it does not prohibit joinder of new issues. 7


       7Facebook also argues that Windy City waived its
  arguments challenging the Board’s joinder decisions by
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC              17



  Both Windy City and Facebook contend that the statute is
  clear and unambiguous in favor of their respective inter-
  pretations. See Cross-Appellant’s Response Br. 40, 44; Ap-
  pellant’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) ar-
  ticulates the time-bar for when an IPR “may not be
  instituted.” 35 U.S.C. § 315(b). But § 315(b) includes a
  specific 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.




  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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       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. 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 . . . de-
  termines warrants the institution of an inter partes review
  under section 314.” 35 U.S.C. § 315(c) (emphases added).
                                5
      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.
      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 be 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
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC              19



  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., 
564 U.S.
  91
, 101 (2011) (“[W]here Congress uses a common-law term
  in a statute, we assume the term . . . comes with a common
  law meaning, absent anything pointing another way.” (in-
  ternal quotation marks omitted)). Facebook has not iden-
  tified any customary, ordinary usage of “joining a person as
  a party to a proceeding” as referring to combining the pro-
  ceedings, or any indication of a congressional intent to de-
  part 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 Procedure 19 and 20 (relating to join-
  der of persons), and Rule 42 (relating to consolidation of
  proceedings), generally parallels the difference between §
  315(c) and § 315(d). Accordingly, the unambiguous lan-
  guage of § 315(c) does not provide for two proceedings to be
  joined, as the Board purported to order here.
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  20            FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




       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 newly instituted IPR proceedings
  themselves. In their concurrence, for example, APJs
  McKone and Lee referred to the majority opinion as “per-
  mitting a party to, essentially, 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”); Appellant’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. See 
Thryv, 140 S. Ct. at 1374 
(considering the statu-
  tory design of the America Invents Act (“AIA”) and observ-
  ing that “the §315(b)-barred party can join a proceeding
  initiated by another petitioner” (emphasis added)). Subsec-
  tion (c) allows the Director to “join as a party to [an IPR]
  any person who” meets certain threshold requirements. It
  would be an extraordinary usage of the term “join as a
  party” to refer to persons who were already 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 permitted 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 infer-
  ring a departure in the present context.
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC                21



       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
  “marry” necessarily requires another person. The “join as
  a party” language does the same here. A party cannot log-
  ically 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.
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  22             FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




                                 6
       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. As discussed above, § 315(c) authorizes joinder
  of a person as a party, not “joinder” of two proceedings.
      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. See 
Thryv, 140 S. Ct. at 1374
  (“[T]he §315(b)-barred party can join a proceeding initiated
  by another petitioner.” (emphasis added)). The already-
  instituted IPR to which a person may join as a party is gov-
  erned by its own petition and is confined to the claims and
  grounds challenged in that petition. 
SAS, 138 S. Ct. at
  1356 
(“[T]he petitioner’s petition, not the Director’s discre-
  tion, is supposed to guide the life of the litigation.”);
 id. at
  1355 (“Congress chose to structure a process in which it’s
  the petitioner, not the Director, who gets to define the con-
  tours of the proceeding.”). We therefore conclude that the
  unambiguous meaning of § 315(c) is that it allows the Di-
  rector discretion to join a person as a party to an already-
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC                  23



  instituted IPR but does not permit the joined party, by vir-
  tue of the joinder decision alone, to bring new issues from
  a second 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 superfluous the reference to
  consolidation in § 315(d), which is disfavored in statutory
  interpretation. See Marx v. Gen. Revenue Corp., 
568 U.S.
  371
, 386 (2013) (“[T]he canon against surplusage is strong-
  est when an interpretation would render superfluous an-
  other part of the same statutory scheme.”). Again,
  construing § 315(c) to allow unfettered joinder of proceed-
  ings is inconsistent with all common understandings of the
  terms “joinder” and “consolidation.”
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  24             FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




       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.
  157 Cong. Rec. S1360, S1376 (daily ed. Mar. 8, 2011) (state-
  ment of Sen. Kyl). We disagree for at least two reasons.
      First, 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
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC               25



  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.”).
      Second, this single, ambiguous comment from one sen-
  ator 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-
  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
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  26            FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




  the claims with the risk that the patent owner will assert
  claims that were not covered by the petitions.
 

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
  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.
  Accused infringers who wish to protect their option of pro-
  ceeding with an IPR may, moreover, make different strat-
  egy 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
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC               27



  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. 8
      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.
                                7
      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




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




  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
  applying the traditional tools of statutory interpretation,
  we are left with no ambiguity that could warrant deference.
                                8
      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). 9 We therefore vacate-in-part the Board’s
  final written decisions with respect to the improperly
  added claims. Specifically, the Board’s final written deci-
  sion 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. With respect to
  these claims, we remand to the Board, in order for the
  Board to consider whether the termination of the instituted
  proceedings related to the two late-filed petitions finally re-
  solves those proceedings.




       9   As noted above, to the extent the Board’s joinder
  decision could be read as having joined Facebook’s two IPR
  proceedings, rather than having joined Facebook as a party
  to its own existent proceeding, that was also improper and
  contrary to the unambiguous language of § 315(c).
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC              29



                               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
  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). 10
                               2
      We begin with the ’245 patent. As mentioned above,
  the disputed claims of the ’245 patent relate to the ability



      10   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, 136 S. Ct. at 2146
.
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  30             FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC




  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, 11 Rissanen, 12 Vetter, 13
  Pike, 14 and Westaway; 15 and instituted review of claims 6,
  8, 15, 17, and 18 based on obviousness over the same refer-
  ences and Lichty. 16 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:




       11 U.S. Patent No. 6,608,636 (J.A. 1195–227).
       12 European Patent Application No. 0621532
  (J.A. 1228–39).
      13  Ronald J. Vetter, Videoconferencing on the Internet,
  IEEE Computer Society 77–79 (Jan. 1995).
      14  Mary Ann Pike et al., Using Mosaic (1994)
  (J.A. 1246–397).
      15  U.S. Patent No. 5,226,175 (J.A. 1398–408).
      16  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                 31



      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
  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
 

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




       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
       would seek out software to present the communica-
       tion.

  

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.”
 

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



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




  area outside of the conference room with “the local com-
  puter,”
 

29, 31, 
or “the user’s desktop,”
 

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



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




  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.
 

30. 
The Board agreed and
  found that “Rissanen teaches a database that stores data
  with persistence and tools for interacting with the data-
  base.”
 

31.
      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
 

36 
(ar-
  guing that carrying out the combination “would take sub-
  stantial creativity”);
 

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



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




      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
  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. 17
      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




       17   See supra note 3.
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC              39



      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.
  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.”).
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  40            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
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC              41



  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.
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  42            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. 18
      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



       18 James Gosling, Java Intermediate Bytecodes, ACM
  SIGPLAN Workshop on Intermediate Representations
  (Jan. 1995).
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  FACEBOOK, INC. v. WINDY CITY INNOVATIONS, LLC              43



  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.
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  44             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 and remanded 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 and remanded with re-
  spect to claims 203, 209, 215, 221, 477, 482, 487, and 492.
  The Board’s final written decision on the ’552 patent is af-
  firmed. The Board’s final written decision on the ’356 pa-
  tent 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, AND REMANDED
                             COSTS
       The parties shall bear their own costs.
Case: 18-1400    Document: 112     Page: 45   Filed: 09/04/2020




    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).
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  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-
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  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”),
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  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.
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  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.
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  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
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  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.”

  

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.

  

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
 

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.”
 

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.
 

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.