PTAB Roundup

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CAFC: Reviewing an implicit claim construction: The Federal Circuit affirmed the PTAB’s confirmation of challenged claims in an IPR. Although the Board did not expressly construe the claim term at issue (and the appellant/petitioner never asked it to), the Court explained that the appellant could appeal the Board’s “expression of its understanding” of the claim term. The Court, however, affirmed the Board’s implicit construction. HTC Corp. v. Cellular Comm’ns Equip., LLC, No. 2016-1880 (Dec. 18, 2017) (Reyna, joined by Dyk and Taranto).

District Court: Another IPR estoppel case: The District Court granted plaintiff’s motion to estop the defendant from asserting invalidity over printed publications that it could have, but did not, raise in its unsuccessful IPRs. The defendant admitted it had copies of the prior art when it filed its IPR petition. Applying the estoppel statute (and without discussing Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016)), the Court found that the defendant could have raised those references in its petition, and did not, and was therefore estopped from raising them in the litigation. Oil-Dri Corp. of Am. v. Nestle Purina Petcare Co., Case No. 1:15-cv-01067, ECF No. 224 (N.D. Ill. Jan. 16, 2018) (St. Eve).

The PTAB Roundup reported on another IPR estoppel decision in this same case on August 11, 2017.

For more cases addressing the IPR estoppel, see the October 6, 2017 Roundup.

District Court: Pre-institution stay for EDVA’s Rocket Docket: A district court in the Eastern District of Virginia granted a stay pending institution of a defendant’s IPR petition. In addition to the “fast pace of litigation in this district,” the Court pointed to the early stage of the litigation, the potential simplification of issues given that all asserted claims were challenged in the IPRs, the significant resources that might be expended unnecessarily, and the plaintiff’s delay in filing suit. Sharpe Innovations, Inc. v. T-Mobile USA, Inc., Case No. 2:17-cv-00351, ECF No. 41 (E.D. Va. Jan. 10, 2018) (Doumar).

PTAB: A lighting fixture is not a printed publication: One of the petitioner’s grounds included photographs of a label and a removable lens on a lighting fixture. The Board denied institution, reasoning that the IPR statute allows review on the basis of printed publications only, not prior use or sales. Satco Prods., Inc. v. Lighting Sci. Grp. Corp.IPR2017-01643, Paper 12 (Jan. 12, 2018) (Turner, joined by Boucher and Hudalla).

PTAB: Section 325(d) denial based on prosecution of child application: The examiner had already reviewed and rejected substantially the same art and arguments, including § 101 eligibility, submitted by a third party during prosecution of a child application with similar claim scope. The PGR petition apparently copied many of the same arguments from the third-party submission, and the Board exercised its discretion under § 325(d) to deny institution. Live Nation Entm’t, Inc. v. Complete Entm’t Res. B.V.PGR2017-00038, Paper No. 11 (Jan. 16, 2018) (Fitzpatrick, joined by Parvis and Melvin).

PTAB Statistics, Special Edition: The PTO has posted updated statistics from its PTAB Motion to Amend Study. The updated statistics include data through September 2017, the end of FY 2017. Patent owners have filed 313 motions to amend in AIA trials, 275 of which were in completed trials and 38 in trials pending as of September 2017. Of the 275 motions in completed trials, 170 were actually decided, 59 were withdrawn or the case settled, 27 were moot because the original claims were held patentable, and 19 involved motions solely to cancel claims. Of the 170 motions that were decided, 92% (156) were denied, 6% (10) were granted-in-part and denied-in-part, and 2% (4) were granted.

More PTAB Statistics: The PTO posted new AIA Trial Statistics, reporting that 129 IPRs, 2 PGRs, and 3 CBMs were filed in December 2017. The Board’s institution rate for the 2018 fiscal year continues to increase, now standing at 59% (250 instituted, 176 denied), still below previous years, but higher than the 49% rate in the first month of FY18. The PTO also posted new Appeals and Interference Statistics, reporting that the number of pending appeals continues to decline, standing at 12,730 in FY18. This is down from a high of 26,570 in FY12.

*Contributors: Jonathan Strang (ed.), Thomas Donovan, Kevin McNish, Fahd Patel, Steven Peters, Todd Siegel, Dan SmithKenneth Weatherwax, Ben Evans, Christopher GeyerJohn Holley, Arvind Jairam, Thomas King, Thomas Pasternak, Rebecca Rabenstein, Diva Ranade, Surenda (Kumar) Ravula, David Roadcap, and Abhay Watwe. 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.