PTAB Roundup

CAFC: Printed matter doctrine extended to informational and mental steps. The Court upheld the Board’s finding in an IPR that claim limitations for providing information, evaluating, and recommendation were directed to printed matter not functionally related to other claim limitations, and therefore were not entitled to patentable weight under the “printed matter” doctrine. The Federal Circuit also accorded no weight to evidence of objective indicia of nonobviousness associated only with the printed matter limitations. The Federal Circuit also reversed the Board’s determination that a claim (not subject to the doctrine) was not unpatentable, finding that the Board’s decision was based on an improperly narrow claim construction and the “uncontested findings” rendered the correctly construed claim obvious. Judge Newman wrote separately to state that the printed matter doctrine should be confined to literally “printed matter.” Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., Nos. 2016-2616, 2656 (May 16, 2018) (Prost, joined by Lourie; Newman concurring).


CAFC: Fungus treatment unpatentableThe Federal Circuit affirmed the PTAB’s obviousness findings in an IPR. The Court rejected the appellant’s procedural arguments: the Board’s decision relied on the same prior art and arguments presented in the petition, and the petitioner was entitled to reply to the patent owner’s response with supporting evidence. On the merits, substantial evidence supported the Board’s findings regarding the structural and functional similarities between compounds. Anacor Pharms., Inc. v. Iancu, No. 2017-1947 (May 14, 2018) (Bryson, joined by Reyna and Stoll).


District Court: Stays granted in view of SASThe Board partially instituted one defendant’s IPR, and then after SAS issued, added the previously denied claims and grounds to the instituted proceeding. Some other co-defendants then filed their own petitions, seeking to join the IPR. The only co-defendant without an IPR agreed to be bound by the estoppels. The Court granted the defendants’ motions to stay after weighing all of the factors. In doing so, the Court stated: “Significantly, the PTAB used the same Markman claim constructions which this Court adopted.” SPEX Techs., Inc. v. Kingston Tech. Corp., No. 8:16-cv-1790, ECF No. 157 (C.D. Cal. May 16, 2018) (Selna); see also Nichea Corp. v. Vizio, Inc., No. 8:18-cv-00326, ECF No. 49 (C.D. Cal. May 21, 2018) (granting stay with some IPR petitions still pending, noting that post-SAS, “there’s no concern about the PTAB picking and choosing certain claims or certain invalidity grounds from each petition.”).


District Court: Judicial estoppel and arguments made before the Office. The Court denied plaintiff’s motion for summary judgment that defendants are judicially estopped from arguing invalidity by defendants’ prosecution of their own patent’s identical claims. The claims were identical because plaintiff copied defendants’ claims to provoke an interference. The defendants did not contest priority and the PTAB ruled in plaintiff’s favor. Applying Ninth Circuit law, the Court ruled that judicial estoppel did not apply because defendants’ arguments in the interference and in response to an office action were not “clearly inconsistent” with defendants’ arguments before the Court. Space Data Corp. v. Alphabet, Inc., No. 5:16-cv-03260, ECF No. 190 (N.D. Cal. May 18, 2018) (Freeman).


PTAB: Board strikes the entire Reply brief. The Board found that the petitioner’s reply brief included many new theories submitted “under the guise” of responding to the patent owner’s response. Rather than sort through the brief to identify the proper arguments, the Board struck the entire reply brief. On the merits, all of the challenged claims survived. The concurring judge would have reached same result without excluding the reply brief. Dell Inc. v. Realtime Data LLC, IPR2016-00972, Paper No. 71 (May 15, 2018).


PTAB: Section 325(d) and SAS partial institution. A divided panel modified the Institution Decision to include grounds that were originally denied under § 325(d). The dissent, however, would have vacated the original Institution Decision rather than revisit grounds that had already been argued before the Office. The dissent argued that SAS does not compel the Board to institute any given IPR, and this particular IPR should be dismissed given the facts of the case and the early stage of the proceeding. ESET, LLC. v. Finjan, Inc., IPR2017-01738, Paper 19 (May 21, 2018) (Boucher, joined by Yang; Arpin dissenting).


PTAB: Estoppel not a sufficient justification to withdraw claims re-introduced by SAS. The Board modified its Institution Decision after the oral hearing to include the previously denied claims and grounds. The petitioner requested permission to file a motion to withdraw the newly instituted grounds and claims to avoid the estoppel; patent owner opposed. The Board denied the request. Avoiding the estoppel is not good cause to withdraw of the grounds and claims from consideration. DISH Network Corp. v. Customedia Technologies, Inc., CBM2017-00019, Paper Nos. 49 and 50 (May 2 and May 16, 2018) (Petravick, joined by Kim and Deshpande).


PTAB: Late request for rehearing in light of SASBecause the Supreme Court’s SAS decision issued after the 30-day window to request rehearing of the final decision expired, the Board authorized a late request addressing the non-instituted claims. The petitioner sought rehearing of only a subset of those previously denied claims, but the Board ordered the parties to address all denied claims and grounds, and to address any reason, including due process, why the Board should not proceed immediately to a final written decision for those previously denied claims and grounds. Notably, the Board declined to reset the clock for appeal. Kingston Tech. Co., Inc. v. Polaris Innovations Ltd., IPR2016-01622, Paper No. 39 (May 21, 2018) (Barrett, joined by Medley and Homere)


PTAB: Just need a reasonable likelihood for one claim. In a post-SAS Institution Decision, the Board found that the petitioner demonstrated a reasonable likelihood of prevailing as to one ground for one claim, and instituted trial on all other challenged claims and grounds without discussion. Caterpillar, Inc. v. Wirtgen Am., Inc., IPR2017-02188, Paper No. 8 (May 23, 2018) (Cherry, joined by Daniels and Grossman).


Proposed change to IPR/PGR/CBM claim-construction standard.The PTO announced a Notice of Proposed Rulemaking to change the claim-construction standard in AIA proceedings from the broadest reasonable to the district court’s narrower Phillip’s standard. Comments are due to ptabnpr2018@uspto.gov by July 9, 2018.


Chat with the Chief on June 5, 2018. The next “Chat with the Chief” webinar is on Tuesday, June 5 from noon to 1 p.m. ET. Chief Judge David Ruschke will provide additional information about the impact of SAS on AIA trial proceedings. He will also share new information about motion to amend practice, and discuss the recently published Notice of Proposed Rulemaking on the claim construction standard to be applied during AIA trials. The webinar is free and open to everyone to attend.


Boardside Chat on June 7. The next “Boardside Chat” webinar is on Thursday, June 7 from noon to 1 p.m. ET. The chat will discuss “Motions to Exclude and Motions to Strike in AIA Trial Proceedings.” PTAB Judges Justin Arbes and Kevin Cherry will present and address audience questions. The webinar
is free and open to everyone to attend.


*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.), Christopher GeyerJason HeidemannArvind JairamWing LiangSandip PatelKrupa ParikhRebecca RabensteinDavid RoadcapStevan StarkTodd SiegelMikaela Stone, and Amy Simpson. These case summaries are factual in nature and do not reflect the opinions of the contributors, their law firms, or the PTAB Bar Association. Individual contributors do not draft or otherwise have any substantive input into summaries of any case in which the contributor (or his or her firm) was involved.