PTAB Roundup

CAFC: No Tribal sovereign immunity from IPR. The Board denied the Saint Regis Mohawk Tribe’s motion to terminate, and the Federal Circuit affirmed, holding that “tribal sovereign immunity cannot be asserted in IPRs.” The Supreme Court held in Fed. Maritime Comm’n v. S.C. State Ports Auth., 535 U.S. 743, 754–56 (2002) that tribal immunity precluded the agency’s adjudications because they were “overwhelmingly” similar to litigation between private parties in district court. IPR, however, is more like an agency enforcement action than a civil suit brought by a private party. The Director has the statutory discretion to deny any petition and therefore “bears the political responsibility of determining which cases should proceed.” Further, the Board may continue the review even if the petitioner drops out, and the Office may defend the Board’s decision on appeal. Also, the Board’s procedures depart substantially from the Federal Rules of Civil Procedure. Judge Dyk joined the panel opinion, but wrote separately, explaining that IPR is not an adjudication between private parties. St. Regis Mohawk Tribe v. Mylan Pharms. Inc., Nos. 2018-1638 et al. (July 20, 2018) (Moore, joined by Dyk and Reyna; Dyk concurring).

CAFC: Court weighs in on real party-in-interest. Salesforce was sued for infringement, and in response, Salesforce filed CBM petitions that the Board later denied upon finding the patents ineligible for CBM review. Well after § 315(b)’s one-year bar would have precluded Salesforce from doing so itself, RPX Corporation, which helps its clients including Salesforce “quickly and cost-effectively extricate themselves from [NPE] lawsuits,” subsequently filed IPRs challenging the same patents. RPX eventually prevailed over the patent owner’s arguments that the IPRs should be barred by § 315(b) because RPX was merely a proxy for Salesforce, which was also a real party-in-interest itself. On appeal, the Court vacated and remanded, concluding that “the Board applied an unduly restrictive test” and “failed to consider the entirety of the evidentiary record.” The Court ordered the Board to determine on remand if Salesforce “is either a real party in interest or a privy of RPX for purposes of § 315(b)” (emphasis in original), and further stated that “additional discovery may be particularly warranted” in view of the patent owner’s “non-frivolous challenges” to “RPX’s somewhat bald assertions” on the matter. Judge Reyna concurred, writing separately on the privity issue.  Applications in Internet Time v. RPX Corp., Nos. 2017-1698, 1699, 1701 (July 9, 2018, unsealed July 24, 2018) (O’Malley, joined by Hughes; Reyna concurring).

CAFC: Unreasonable to read claims more broadly than specification.The Federal Circuit reversed the Board’s finding of anticipation, finding because the Board’s construction was unreasonably broad. “[I]t is not reasonable to read the claims more broadly than the description in the specification, thereby broadening the claims to read on the prior art over which the patentee asserts improvement.”  TF3 Ltd. v. Tre Milano, LLC, No. 2016-2285 (July 13, 2018) (Newman, joined by Lourie and Hughes).

CAFC: More on public availability. The Federal Circuit affirmed several IPRs finding claims unpatentable, holding that the Board did not err in finding that certain FDA materials were prior-art printed publications. Public dissemination does not require indexing and searchability; the material may have been sufficiently disseminated in other ways. Here, the Court applied the same analysis as in other cases addressing materials distributed at conferences. The FDA widely disseminated sufficient notice of the meeting in the Federal Register along with instructions on how to download the materials to persons of ordinary skill. The materials were freely available for download at the advertised location for months with no reasonable expectation of confidentiality. The Court did not require evidence of actual distribution at the conference.  Jazz Pharms., Inc. v. Amneal Pharms, Nos. 2017-1671, -1673 to -1677, -2075 (July 13, 2018) (Lourie, joined by Newman and Reyna).

District Court: Stayed entire proceeding pending IPRsThe plaintiff sought to stay the entire case, including contract issues and non-party discovery related to the patent claims. The defendants argued that the discovery should continue, but the Court stated that the defendants could not take advantage of the “liberal discovery permitted in this court proceeding to gather patent-related evidence from non-parties for the PTAB proceedings, in view of” the defendants position that the patent claims should be stayed. The Court granted the stay because the Board decision would likely substantially streamline the case. DODOcase VR, Inc. v. MerchSource, LLC, No. 17-cv-07088, ECF No. 90 (N.D. Cal. July 12, 2018) (Laporte).

District Court: Preliminary injunction denied where the Board found similar claims unpatentableIn seeking a preliminary injunction, a plaintiff must establish that it is likely to succeed on the merits. Here, the plaintiff demonstrated that it was likely to show infringement. But because the Board previously found similar claims unpatentable in an IPR, the Court ruled that the plaintiff did not establish that the asserted claims were likely to withstand a validity challenge. NuVasive, Inc. v. AlphaTec Holdings, Inc., No. 3:18-cv-347, ECF No. 37 (S.D. Cal. July 10, 2018) (Bencivengo).

District Court: Costs to defendant after another party’s IPR. The jury found for the plaintiff, but after a third party later prevailed in its IPR of the same patent and the Federal Circuit affirmed, the parties agreed that the court was required to render judgment in favor of the defendant and that the defendant is now the prevailing party. The court therefore awarded costs to the defendant pursuant to Fed. R. Civ. P. 54(d)(1). Personal Audio, LLC v. CBS Corp., No. 2:13-cv-00270, ECF No. 126 (E.D. Tex. July 11, 2018) (Gilstrap).

PTAB: Institution denied because of co-pending Federal Circuit appeal. The Board exercised its statutory discretion to deny an IPR petition, reasoning that it would not be an efficient use of resources to go forward while the construction of a potentially dispositive term is on appeal at the Federal Circuit. The appeal was from a district court, but since the patent had already expired, the Board would apply the same Phillips claim construction standard as the courts. Also, the Board did not see any significant prejudice to the petitioner. The patent owner had not sued the petitioner for infringement (and offered it a covenant not to sue), so the petitioner was not facing a one-year bar. Comtech Mobile Datacome Corp. v. Vehicle IP, LLCIPR2018-00531, Paper 9 (July 20, 2018) (Mayberry, joined by Tartal and DeFranco).

PTAB: No do-overs for the POPRAfter expunging a patent owner’s unauthorized amended preliminary response and declaration, the Board denied the patent owner’s request for permission to file the amended papers to address inconsistencies between its positions in the district court and the Board. The Board stressed that “Patent Owner is expected to be aware of the litigation positions it has taken in different forums as soon as those positions have been taken.” The Board would allow, however, the patent owner to withdraw portions or all of its original preliminary response. LG Elecs., Inc. v. 3G Licensing S.A.IPR2018-00559, Paper No. 11 (July 9, 2018) (Droesch, joined by Lee and Boucher).

PTAB: Examination of co-pending reissue stayed. The Board stayed a reissue proceeding pending an instituted IPR. Proceeding with the reissue examination in parallel with the IPR would needlessly duplicate efforts within the Office and might result in inconsistencies between the two proceedings. Stride Rite Children’s Grp., LLC v. Shoes by Firebug LLCIPR2017-01810, Paper No. 23 (July 12, 2018) (Benoit, joined by Clements and McMillin).

Judicial Conference in Dallas. The Patent Trial and Appeal Board will host a  2018 PTAB Annual Judicial Conference at the Texas Regional Office in Dallas, Texas on Tuesday, July 31, 2018 from 9 a.m. to 4:30 p.m. CT in the Oak Corner Suite at the Meadow Conference Center.

*Contributors:  Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.),  Lori Gordon (Ed.),  Benjamin Evans Janna FischerChristopher Geyer Arvind JairamWing Liang Sandip PatelKrupa Parikh, Rangan Ramasamy, Rebecca RabensteinStevan StarkTodd 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.