PTAB Roundup

CAFC en banc in part: No more “nullity” exception for one-year bar. Confining its opinion to a footnote, the en banc Court held that a voluntary dismissal without prejudice does not create an exception to the one-year bar of 35 U.S.C. § 315(b). The Board previously held—in a decision it designated precedential—that the petitioner in this case was not barred, despite being served with an infringement complaint over one year before filing its IPR, because the complaint was rendered a “nullity” by a dismissal without prejudice. Sitting en banc on that question, the Federal Circuit disagreed, ruling 7 to 2 that “the subsequent dismissal of a civil action is irrelevant to whether a petitioner, real party in interest, or privy of the petitioner was previously ‘served with a complaint’ within the meaning of § 315(b).” The panel of three judges explained their reasoning on this issue, and further held that the fact that the claims had been amended in reexamination since the complaint was filed and dismissed did not restart the clock either, because, among other things, there was no showing that the changed claims were “materially different.” Click-To-Call Techs., LP v. Ingenio, Inc, No. 2015-1242 (Aug. 16, 2018) (en banc in part) (O’Malley, joined by Taranto and Stark (sitting by designation)).

CAFC: Three affirmed, one vacated on one-year bar. The Federal Circuit affirmed the Board’s obviousness determinations in several related IPRs, but vacated one as time-barred. In one affirmance, the Court determined that the Board did not change the obviousness argument midstream because it was fully set forth in the petition. In another, the Court held that substantial evidence supported the Board’s fact-findings. And finally, the Court applied its newly issued en banc Click-To-Call decision discussed above to vacate and remand another IPR for dismissal because an earlier-served complaint triggered the one-year bar despite a voluntary dismissal without prejudice. Luminara Worldwide, LLC v. Iancu, Nos. 2017-1629, -1631, -1633 (Aug. 16, 2018) (Dyk, joined by Lourie and Taranto).

CAFC: No shenanigans, no mandamus. The Federal Circuit denied mandamus petitions asking the Court to revisit the Board’s determinations that various references were not prior-art printed publications in decisions denying institution of four IPRs. The Court explained that the petitioner did not demonstrate a “clear and indisputable right” to the writ, and was merely attempting to sidestep the statutory prohibition against judicial review of decisions denying institution. “[T]his case involves no issues extraneous to the application of patent law principles of unpatentability based on printed publications, nor does it involve any ‘shenanigans’ on the part of the Board that might justify appellate review or review by mandamus.” In re Power Integrations, Inc., Nos. 2018-144, -145, -146, -147 (Aug. 16, 2018) (Bryson, joined by O’Malley and Chen).

District Court: No attorneys’ fees for IPR. The Court granted summary judgment of noninfringement, and because its claim construction had rendered the case objectively baseless, found the case exceptional and awarded fees for all work performed after its claim-construction order. It did not award fees for the IPR, however. The Board had not yet decided whether to institute and the defendant did not show why the IPR proceedings were necessary to the Court’s non-infringement determination. Spitz Techs. Corp. v. Nobel Biocare USA LLC, No. 17-00660, ECF No. 229 (C.D. Cal. Aug. 13, 2018) (Selna).

District Court: Entire case, including trade secret and contract claims, stayed pending IPR. The plaintiff originally alleged only patent infringement and the defendant filed IPRs in response. During a “protracted” venue battle, however, the plaintiff added trade secret and breach of contract claims and withdrew its patent infringement claims, and the defendant counterclaimed noninfringement and invalidity. The plaintiff then moved to stay the patent counterclaims pending IPR, while the defendant sought to stay the entire case. The Court agreed with the defendant. As the plaintiff delayed asserting its non-patent claims, it will not be unduly prejudiced by a stay. Further, the stay will simplify the trade-secret issues and the case is still at an early stage. Sennco Solutions Inc. v. Mobile Techs., No. 16-cv-09668, ECF No. 87 (N.D. Ill. Aug. 7, 2018).

PTAB: Who owns the patent? The Board terminated an instituted IPR at the request of the petitioner because the party contending that it owned the patent had not shown it had standing to take action as patent owner. Although the assignment from the inventors to a first entity was clear, the Board found that the evidence of a subsequent assignment lacked credibility in view of evidence submitted by the petitioner. FedEx Corp. v. Patent Owner, IPR2017-01786 Paper 28 (Aug. 13, 2018) (Horvath, joined by Roesel and Zado).

PTAB: On remand, the CBM is not a CBM after all. In the appeal of one of the very first CBM proceedings, the Federal Circuit vacated the Board’s unpatentability findings and remanded for a determination whether the challenged patent was indeed a CBM-eligible patent. On remand, the Board vacated its original final written decision and terminated the proceeding, finding that the patent did not claim a covered business method. Notably, the Board refused to consider the petitioner’s argument that two unchallenged claims support CBM eligibility because that argument was not included in the original petition. Google, Inc. v. Unwired Planet, LLC, CBM2014-00006, Paper 51 (August 13, 2018) (Bisk, joined by Kim and Parvis).

PTAB: Additional discovery of ITC documents. The Board granted the patent owner’s motion for additional discovery for documents related to objective indicia of non-obviousness produced in a co-pending ITC investigation. The Board found petitioner’s admission that the documents are not otherwise available and the ease of copying the documents justified the request. Wirtgen Am., Inc. v. Caterpillar Inc., IPR2017-02185, Paper No. 18 (August 9, 2018) (Grossman, joined by Daniels).

PTAB: Section 325(d) not fatal this time. The Board denied the patent owner’s request for rehearing of the Board’s post-SAS order adding grounds previously denied under 35 U.S.C. §325(d) instead of terminating the partially instituted IPR. The Board stressed that it may no longer partially institute IPRs, but if faced with the same petition in the first instance, it may well have denied the petition in its entirety. ESET, LLC v. Finjan, Inc., IPR2017-01738, Paper 28 (Aug. 10, 2018) (Boucher, joined by Giannetti and Yang).

Trial Practice Guide Update. PTAB published an update to the AIA Trial Practice Guide including guidance on providing for sur-replies as a matter of right, the use of expert testimony, procedures for oral hearing before the Board, distinctions between motions to exclude and motions to strike, considerations of various non-exclusive factors in determination of whether to institute trial, and providing pre-hearing conference.

*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.), Timothy Caine, Benjamin Evans, Janna Fischer, Christopher Geyer, Jason Heidemann, Arvind Jairam, Wing Liang, Sandip Patel, Krupa Parikh, Rebecca Rabenstein, Rangan Ramasamy, 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.