PTAB Roundup

SCOTUS and PTAB: Here are links to the SAS Institute and Oil States opinions, and to the PTAB’s Guidance on the Impact of SAS Institute on AIA Trial Proceedings. Also, our PTAB section below has a few post-SAS institution decisions and other orders that issued in time for this issue of the PTAB Roundup.

CAFC: Privity and the one-year bar. On remand from an en banc decision holding that the Board’s time-bar determinations under 35 U.S.C. § 315(b) are appealable, the panel affirmed the Board’s original determination that the IPR petition was not barred. The Board found, and the court agreed, that petitioner’s co-defendants (who would have been time-barred) were not real parties-in-interest or privies despite the petitioner’s agreements to indemnify the defendants in their district-court litigations. Although the majority stated that the Board recognized “a number of circumstances in which privity might be found,” Judge Reyna dissented, stating that the majority adopted an overly narrow test for privity that is contrary to Taylor v. Sturgell, 553 U.S. 880 (2008). Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Apr. 20, 2018) (Bryson, joined by Dyk; Reyna dissenting).

CAFC: Must expressly recite entire priority chain. The Federal Circuit affirmed the Board’s obviousness determination in an IPR, agreeing that the patent’s priority chain is broken because its express recitation left out an intermediate link in the chain. The patent’s incorporation-by-reference statement was not sufficient to satisfy the patentee’s burden of providing sufficient notice of an earlier effective filing date. Droplets, Inc. v. E*TRADE Bank, Nos. 2016-2504, -2602 (Apr. 19, 2018) (O’Malley, joined by Dyk and Wallach).

CAFC: Inventor’s own emails insufficient corroboration. The court affirmed the Board’s unpatentability determination in an IPR, agreeing that the inventor’s attempt to antedate a prior-art reference was insufficiently corroborated. Under the rule of reason analysis, “evidence of corroboration must not depend solely on the inventor himself.” Here, the inventor pointed to his emails, contending that they had attachments corroborating his prior conception. The only evidence that the allegedly corroborating documents were actually attached to those emails, however, was the inventor’s own testimony. Apator Miitors ApS v. Kamstrup A/S, No. 2017-1681 (Apr. 17, 2018) (Moore, joined by Linn and Chen).

District Court: No issue preclusion from an IPR. The Court denied the plaintiff’s motion in limine, finding that the defendant was not precluded from making several obviousness arguments. In the Third Circuit, issue preclusion requires that (1) the identical issue was previously litigated, (2) the issue was actually litigated, (3) the previous determination was necessary to the decision, and (4) the party to be precluded was fully represented in the previous action. Here, the PTAB was considering a different set of references, so the identical issue was not previously litigated. Nox Medical EHF v. Natus Neurology, Inc., No. 1:15-cv-00709, ECF No. 252 (D. Del. Apr. 26, 2018) (Andrews).

District Court: Prosecution history disclaimer in an IPR. The court found one statement in a preliminary response to an IPR petition to constitute disclaimer, while another did not. Specifically, the patent owner’s argument that “[a] person of ordinary skill in the art would understand that a digital filter, alone, is not—and cannot be used as—a baseband amplifier” constituted a clear and unmistakable disclaimer of claim scope, narrowing the relevant claim limitation. In contrast, the patent owner’s arguments regarding a prior-art reference’s filter-coefficient teachings did not clearly and unmistakably disavow all filter coefficients from the scope of another claim term. Red Rock Analytics, LLC v. Samsung Elecs. Co., No. 2:17-cv-00101, ECF No. 115 (E.D. Tex. Apr. 16, 2018) (Payne).

PTAB: Post-SAS Institution Decisions. In some of the first institution decisions after SAS Institute, the Board analyzed each challenge presented in the Petition and instituted trial on all challenged claims, despite finding that the petitioner failed to establish a reasonable likelihood of prevailing on nine of the eleven challenged claims. Western Digital Corp. v. Spex Techs., Inc., IPR2018-00082, Paper 11 (Apr. 25, 2018) (Fishman, joined by Pettigrew and Boudreau); see also Nanya Tech. Corp. v. Lone Star Silicon Innovations, LLC, IPR2018-00062, Paper 7 (April 25, 2018).

PTAB: Post-SAS orders adding denied grounds. The Board has begun issuing supplemental trial orders instituting trial on all grounds presented in the petition and requesting that the parties meet and confer as to scheduling and briefing. E.g., Taiwan Semiconductor Mfg. Co. v. Godo Kaisha IP Bridge 1, IPR2017-01862, Paper 20 (Apr. 27, 2018) (Abraham, joined by Arbes and Chagnon) (order issued prior to Patent Owner response); Emerson Elec. Co. v. IPCO, LLC, IPR2017-00213, Paper 41 (PTAB Apr. 26, 2018) (Melvin, joined by Kauffman and Crumbley) (order issued after oral argument).

PTAB: Diligence key to successful motion to submit supplemental information. After filing its IPR petition, the petitioners obtained a product data sheet relevant to the instituted obviousness ground via subpoena and sought permission to file the sheet in the IPR as supplemental information. The Board granted petitioners’ motion over the patent owner’s opposition, reasoning that petitioners were diligent in obtaining the data sheet and that filing before the patent owner’s response was efficient and the least prejudicial to patent owner. Sanofi-Aventis U.S. LLC v. Immunex Corp., IPR2017-01884, Paper 30 (Apr. 16, 2018).

PTAB: Hazards of alternative constructions. In an IPR governed by the Phillips claim construction standard (because the patent would expire within 18 months of the Notice of Filing Date), the petitioner presented its own district-court construction and the patent owner’s construction for a certain claim term. The petitioner, however, analyzed the challenged claims only under patent owner’s broader construction, which the petitioner stated was erroneous. The majority denied institution, reasoning that the petitioner failed to identify how the challenged claims are unpatentable under a construction it adopted as its own as required by 37 C.F.R. § 42.104(b)(4). In dissent, Judge Paulraj reasoned that the majority opinion forces a petitioner “into an untenable Hobson’s choice of adopting—as its own—Patent Owner’s proposed constructions.” Hologic, Inc. v. Enzo Life Sciences, Inc., IPR2018-00019, Paper 17 (April 18, 2018) (Fitzpatrick, joined by Yang; dissent by Paulraj).

PTAB: Service before dismissal without prejudice triggers one-year bar. In the precedential case, Oracle Corp. v. Click-to-Call Techs. LP, IPR2013-00312, Paper 26 (Oct. 30, 2013), the Board held that a dismissal without prejudice renders service of a complaint a nullity for purposes of the one-year bar of 35 U.S.C. § 315(b). Here, the patent owner originally filed suit in the Southern District of New York, but dismissed that action without prejudice and re-filed in the Southern District of Florida on the same day. The majority reasoned that service of the original SDNY complaint triggered the bar despite Oracle’s nullity rule because the parties remained in a continuous dispute. In dissent, Judge Fitzpatrick explained that the Board is bound by Oracle: the dismissal without prejudice rendered the SDNY complaint a nullity that cannot trigger the one-year bar. That said, explained Judge Fitzpatrick, Oracle was wrongly decided. Fujifilm Corp. v. Sony Corp., IPR2018-00060, Paper 8 (April 19, 2018) (Boucher, joined by Smith with Fitzpatrick dissenting).

*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.), Timothy Caine, Christopher Geyer, Jason Heidemann, Arvind Jairam, Wing Liang, Sandip Patel, Krupa Parikh, David Roadcap, Stevan Stark, Todd Siegel, 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.