PTAB Roundup

CAFC: Reversal, not remand, of insufficiently explained Board decision. A divided Federal Circuit reversed the Board’s obviousness decision in an IPR. The majority ruled that the technology was “not unusually simple” and “particularly straightforward,” and that the missing element “plays a major role in the subject matter claimed.” As a result, the Board erred by relying on the skilled artisan’s “ordinary creativity” established by conclusory expert testimony to modify the prior art instead of a “reasoned analysis [with] evidentiary support.” The majority reversed, stating that it “cannot glean” a sufficient explanation from the record. Citing Chenery, it also declined the appellee’s “invitation to consider evidence that the Board did not cite in its opinion.” Judge Newman dissented. She would have found the Board’s explanation sufficient, and even if it was not, the decision should be vacated and remanded, not reversed. DSS Tech. Mgt., Inc. v. Apple Inc., Nos. 2016-2523, 2016-2524 (Mar. 23, 2018) (O’Malley, joined by Reyna; Newman dissenting).


CAFC: Board not required to consider untimely arguments on remand. In its first decision, the Board found a claim anticipated based a new argument first made during the oral hearing. The Federal Circuit vacated and remanded, explaining that the Board must provide the patent owner “a fair opportunity to respond” to the petitioner’s new argument. On remand, the previously unpatentable claim survived because the Board declined to consider the petitioner’s untimely argument. On appeal for the second time, the petitioner/appellant contended that the Board was required to consider the new argument and any response. The Federal Circuit disagreed. The Board has the discretion to dismiss an untimely argument or waive its own regulations and allow further briefing and evidence. Dell Inc. v. Acceleron, LLC, No. 2017-1101 (Mar. 19, 2018, Errata Mar. 22, 2018) (Reyna, joined by Moore and Taranto).


CAFC: Broadest Reasonable vs. Phillips construction. After disagreeing with the Board’s claim construction in an ex parte reexamination a second time, the Federal Circuit reversed. The patent-at-issue had been extensively litigated. A jury returned a verdict of infringed and not invalid and the Federal Circuit affirmed. Meanwhile, the Board issued its first decision in the reexamination. It affirmed the Examiner’s rejections, relying on a generalist dictionary to arrive at a broader construction than the district court. The Federal Circuit vacated the Board’s first decision in part because the Board “fundamentally misconstrued” the patent owner’s claim-construction arguments. Because the patent owner’s arguments were expressly tied to the district court construction, “the board had an obligation . . . to evaluate” the district court’s construction. On remand, the Board affirmed the Examiner again. The Board continued to rely on a generalist dictionary, stating that a comparison of its construction and the district court’s was “unwarranted” because the Phillips construction is “typically” narrower than the broadest reasonable interpretation. On the second appeal, the Federal Circuit held that the Board’s construction was unreasonably broad; it was inconsistent with the specification and rendered claim language superfluous. The Court further found that the rejections were unsupported under the proper construction, and reversed. In re Power Integrations, Inc., No. 2017-1304 (Mar. 19, 2018) (Mayer, joined by Moore and Stoll).


CAFC: The “prima facie case” during prosecution. In affirming an obviousness rejection, the Federal Circuit explained the contours of the evidentiary burden-shifting tool used by the Examiner during prosecution called the “prima facie case.” Here, the Board correctly agreed with the Examiner the claims were prima facie obvious because the difference between the disclosed and claimed ranges of values in a predictable art was “virtually negligible;” and no overlap was required. The Board also correctly agreed with the Examiner that the art did not teach away. It did not criticize, discredit, or otherwise discourage using the claimed range. In re Brandt, No. 2016-2601 (Mar. 27, 2018) (Reyna, joined by Lourie and Taranto).


District Court: Forum selection clause precludes IPR. The court refused to enforce a “no challenge” clause on public policy grounds, citing Lear, Inc. v. Adkins, 395 U.S. 653 (1969). The court, however, enforced the license agreement’s forum selection clause, granting the patent owner/plaintiff’s motion for a temporary restraining order and ordering the defendant/petitioner to withdraw its IPR petitions. The parties had agreed to litigate all disputes under the laws of California in San Francisco or Orange County, and contrary to the defendant/petitioner’s arguments, patent validity is a dispute that arose out of the patent license agreement. Dodocase VR, Inc. v. MerchSource, LLC, No. 3:17-cv-07088-EDL, ECF No. 52 (N.D. Cal. Mar. 26, 2018) (Laporte).


District Court: PTAB’s ability to construe claims weighs against indefiniteness. The court denied defendant’s motion for summary judgment of indefiniteness. The court acknowledged that an IPR does not estop the defendant from pursuing this defense. However, the court stated that “Defendant does not explain how the court and PTAB were both able to construe these terms, yet any reasonable finder of fact must conclude that they are indefinite on a clear and convincing evidence standard.” Am. Tech. Ceramics Corp. v. Presidio Components, Inc., No. 14-CV-6544, ECF No. 126 (E.D.N.Y. March 27, 2018) (Matsumoto).


PTAB: First instituted derivation proceeding. Derivation occurs when a party files a patent application, without authorization, claiming an invention derived from the invention in another party’s own later-filed patent application. The derivation rules provide a framework for the petitioner to assert and prove that it (or its inventors) conceived of the invention and that it was communicated to the respondent. The threshold for institution, which was met here, is “whether the petition demonstrates substantial evidence that, if unrebutted, would support a determination of derivation.” 37 C.F.R. § 42.405(c). Anderson Corporation v. GED Integrated Solutions, Inc., DER2017-00007, Paper 32 (Mar. 21, 2018) (Cocks, joined by Chang and Arbes).


PTAB: Failure to show a web page’s public accessibility. The Board denied institution because the petitioner failed to show that an article on a web page and source code available from a link on that page are prior-art printed publications. The petitioner alleged the WayBack Machine archive captured the article, but the article downloaded from the archive did not match the version submitted as prior art. The petitioner also submitted a declaration from the author of the article and source code, but that declaration also pointed to exhibits that did not match the proffered prior art exhibit. The Board also addressed the purported public availability of the pages, stating that the author’s testimony that a search engine would have found the page for the same reasons the Internet Archive did was conclusory and lacked foundation because “he does not establish he is competent to testify about the Internet Archive.” The Board further stated that “the fact that the Internet Archive was able to access a document does not establish, without more, that the document was publicly accessible through traditional search engines, like Google or Yahoo.” Shenzhen Zhiyi Tech. Co. Ltd. v. iRobot Corp., IPR2017-02133, Paper 8 (Mar. 28, 2018) (McMillin, joined by Saindon and Wieker).


PTAB: No termination despite decision in earlier PGR. After a the Board issued a final written decision in an earlier PGR finding that a claim term is not indefinite, the patent owner sought authorization to file a motion to terminate this PGR involving the same claim term in a related patent on two grounds: (i) the estoppel set forth in 35 U.S.C. § 325(e)(1) precluded maintaining this proceeding, and (ii) the Board should exercise its discretion and terminate this proceeding to conserve resources and reduce the risk of inconsistent decisions. The Board denied the request. The § 325(e)(1) estoppel does not apply because it is limited to claims of the patent in the first PGR. Also, termination was not warranted because of the differences in the two proceedings’ records, and briefing is nearly complete so any potential savings of resources is small. Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2017-00015, Paper 26 (Mar. 26, 2018) (Cherry, joined by Kim and Ippolito).


PTAB News: The Board’s Judicial Conference will be on Thursday, June 28, 2018, at the Madison Auditorium on the USPTO campus in Alexandria, VA. Attendance is free. For more information, click here.


PTAB Statistics: The PTO posted new AIA Trial Statistics, reporting that 139 IPRs, 7 PGRs, and 0 CBMs were filed in February 2018. The Board’s institution rate for the 2018 fiscal year now stands at 62% (403 instituted, 246 denied), slightly below last year’s rate of 63%. The PTO also posted new Appeals and Interference Statistics, reporting that the number of pending appeals continues to decline, standing at 12,505 in FY18. This is down from a high of 26,570 in FY12.


*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), David Roadcap (Ed.), Ben Evans, Christopher Geyer, Jason Heidemann, Arvind Jairam, Fahd Patel, Sandip Patel, Rebecca Rabenstein, Todd Siegel. 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.