PTAB Roundup

CAFC: Involuntarily dismissed complaint triggers one-year bar.  In Click-To-Call Technologies v. Ingenio, 899 F.3d 1321 (Fed. Cir. 2018), the Federal Circuit held that voluntary dismissal without prejudice does not render service of an infringement complaint a nullity for the purposes of 35 U.S.C. § 315(b)—the defendant’s one-year period for filing an IPR continues to run. In this case, the Court extended Click-to-Call holding to a complaint involuntarily dismissed without prejudice and vacated the Board’s final written decision finding all challenged claims unpatentable. “Just as the statute includes no exception for a voluntarily dismissed complaint, it includes no exception for an involuntarily dismissed complaint.” Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Nos. 2017-1555, 2017-1626 (Sep. 28, 2018) (Stoll, joined by Lourie and Clevenger).

CAFC: Priority claim defeated by amending of ancestor’s priority chain.  In affirming the Board’s rejection of all claims in an inter partes reexamination, the Federal Circuit re-affirmed that amending an earlier-filed parent application priority claim may affect the priority claims of its child applications. Here, the patentee had deleted the fifth application’s original benefit claim to the first through fourth filed applications’ filing dates. As a result, later-filed applications (including the eighth, which matured into the patent-at-issue) were not entitled to the benefit of those earlier dates. Natural Alternatives Int’l, Inc. v. Iancu, No. 2017-1962 (Fed. Cir. Oct. 1, 2018) (Prost, joined by Moore and Reyna).

District Court: Trade secret case stayed pending related Interference.  The plaintiff had accused the defendant of misappropriating the plaintiff’s trade secrets and filing for its own patents on subject matter the plaintiff disclosed to the defendant under a confidentiality agreement. Meanwhile, the Board found the plaintiff’s patent claims invalid in an interference proceeding, and the plaintiff is appealing that decision to the Federal Circuit. Because of a significant overlap of issues, the district court found that the most efficient course was to stay the litigation until the Federal Circuit addresses the interference. Wilson v. Corning, Inc., No. 13-cv-00210, ECF No. 560 (D. Minn. Sept. 27, 2018) (Frank).

District Court: Denied CBMs weigh against exceptional case finding.  After the defendant invalidated the asserted patent under 35 U.S.C. § 101 on a motion to dismiss, it moved for attorneys’ fees. The Court declined to find the case exceptional, in part because the Board had refused to institute the defendant’s two CBM petitions. The Court noted that even though it found the claims invalid, “the fact that another tribunal specialized in patent law declined to institute a proceeding that could have found the [asserted patent] invalid does tend to show that [the plaintiff’s] position was not objectively baseless.” Global Cash Access, Inc. v. NRT Tech. Corp., Case No. 2:15-cv-00822, ECF No. 102 (D. Nev. Sept. 24, 2018) (Du).

PTAB: Bennett Regulator and Click-to-Call.  Following the Federal Circuit’s decision in Click-to-Call, the Board sua sponte revisited its institution decision and terminated the IPR. The Board had originally ruled the IPR was not barred under 35 U.S.C. § 315(b) because the complaint that was served more than a year earlier was rendered a nullity when it was dismissed without prejudice. The petitioner argued that Click-to-Call was limited to voluntary dismissals without prejudice, and the complaint in this case was involuntarily dismissed. The Board disagreed, and followed the Federal Circuit’s recently issued decision Bennett Regulator [also discussed in this issue of the Roundup]. Infiltrator Water Techs., LLC v. Presby Patent Trust, IPR2018-00224, Paper 18 (October 1, 2018) (Kennedy, joined by Woods and Kalan).

PTAB: IPR denied for failing to name RPI. The Board denied institution because the petitioner failed to name its corporate parent as a real party-in-interest. The Board noted that the relevant inquiry is not limited to actual control, but includes the “opportunity to control that might reasonably be expected between two formal coparties.” Based on the evidence of the parent’s full ownership and past control in legal matters involving the petitioner, the Board found that the parent should have been named as an RPI. The Board also refused the petitioner’s contingent request to amend its mandatory notices while maintaining its filing date in the event the parent was found to be an RPI. Sirius XM Radio, Inc. v. Fraunhofer-Gesellschaft zur Förderung der Angewandten Forschung E.V., IPR2018-00689, Paper 11 (Sept. 21, 2018)

Phillips coming to the PTAB For all IPRs, PGRs, and CBMs filed after November 13, 2018, the Board will apply the Phillips claim construction standard instead of the broadest reasonable interpretation. Pending proceedings are not affected. The final rule is available here.

PTAB Statistics.  The August Trial statistics are out, and show that 128 IPRs, 3 PGRs, and 2 CBMs were filed in August 2018. The Board’s institution rate for the 2018 fiscal year is 60%, lower than 63% in FY 2017 and 67% the year before that. The August Appeals and Interference Statistics show that the number of pending appeals continues to decline, standing at 11,522, down from a high of 26,570 in FY 2012.

*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.),Janna Fischer, Christopher Geyer, Sandip Patel, Rebecca Rabenstein, Rangan Ramasamy, Stevan Stark, Todd Siegel, and James Stein. 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.