PTAB Roundup

CAFC: Competitor has standing to appeal its IPR, obtains reversal. The Federal Circuit held that the petitioner/appellant has standing to appeal its IPR even though it was not accused of infringement and did not concede that it infringes. The Court was persuaded by the appellant’s declarations (submitted in reply to a standing challenge in appellee’s responsive brief) that its plant uses the same reactants to generate the same products as in the challenged patent. Also, the appellee refused to grant the appellant a covenant not to sue and, during the IPR, accused the appellant of copying its patent. On the merits, the Court reversed. It disagreed with the Board’s ruling that the traditional burden-shifting framework for overlapping ranges (i.e., that a claimed range is presumed obvious when it overlaps a range disclosed in the prior art) is prohibited in IPRs under Dynamic Drinkware and Magnum Oil. The Court explained that the petitioner met its burden by demonstrating the overlap, and the patent owner did not come forward with evidence (e.g., showing unexpected results at the claimed values) to overcome that showing. E.I. Du Pont de Nemours & Co. v. Synvina C.V., No. 2017-1977 (Sep. 17, 2018) (Lourie, joined by O’Malley and Chen).


CAFC: What it is and what it does. The Federal Circuit affirmed an IPR decision canceling apparatus claims and confirming method claims. The apparatus claims were construed to mean the apparatus is “reasonably capable” of performing (as opposed to “configured to” perform) the recited function. As a result, the apparatus claims read on prior art that was also capable of performing the function. The method claims, however, required performing the function. The Board’s finding that the petition failed to demonstrate that a POSITA would have been motivated to operate the prior-art device in the claimed manner was supported by substantial evidence. ParkerVision, Inc. v. Qualcomm, Inc., Nos. 2017-2012, 2013, 2014, 2074 (Sep. 13, 2018) (O’Malley, joined by Reyna and Taranto).


CAFC: Catalog from conference is a prior-art publication. The Federal Circuit affirmed the Board’s decision that the claims are unpatentable, holding that substantial evidence supports the Board’s finding that a catalog was made publicly available at a 2003 conference. The Court agreed with the Board that the testimony of each of two witnesses was corroborated by the other’s testimony,the catalog itself with the 2003 date on its face, and the testimony of a third witness. The Court also concluded that it was not bound by its earlier affirmance of an ITC decision finding that the catalog was not available because the Board applies a lower evidentiary standard and had more evidence before it. Nobel Biocare Services AG v. Instradent USA, Inc., No. 2017-2256 (Sep. 13, 2018) (Lourie, joined by Prost and Chen).


CAFC: No reasonable expectation of success. The Federal Circuit affirmed the Board’s judgment of no interference-in-fact. Here, the interference-in-fact question turned on whether one set of claims renders obvious the subject matter of another. The Board found that a POSITA would not have had a reasonable expectation of success in applying certain CRISPR DNA techniques to eukaryotic cells. Despite near-simultaneous invention, the Court held that the Board’s decision was supported by substantial evidence statements by the named inventors “acknowledging doubts and frustrations about” applying CRISPR as claimed. Regents of Univ. of Cal. v. Broad Inst., Inc., No. 2017-1907 (Sep. 13, 2018) (Moore, joined by Prost and Schall).


District Court: Voluntary dismissal without prejudice precludes fees under § 285.: The case was stayed pending several reexaminations. After the Board affirmed the final reexamination’s rejections of all asserted claims, the plaintiff voluntarily dismissed the case without prejudice under Fed. R. Civ. P. 41. The Court denied the defendant’s subsequent motion for attorney fees. Because the suit was dismissed without prejudice, the defendant was not the prevailing party under § 285. Also, the case was not exceptional because the defendant only argued validity, and the plaintiff’s good-faith belief that its claims were valid were borne out by several different examiners before the final, successful reexamination. O.F. Mossberg & Sons, Inc. v. Tilney Triggers, LLC, No. 3:12-cv-00198 (D. Conn. Sept. 14, 2018) (Bolden).


District Court: Pre-institution stay denied despite statutory disclaimer of certain claims.Before the Board decided whether to institute, the defendant moved to stay litigation pending its multiple IPRs and CBMs. In one of the CBMs, the plaintiff statutorily disclaimed certain asserted claims. The defendant argued that this disclaimer demonstrated that the PTAB proceedings would simplify the litigation, but the Court concluded that the disclaimer took place “outside the scope of proceedings before the PTAB” and did not indicate that the pre-institution IPRs and CBMs would simplify the issues before the court. Universal Secure Registry, LLC v. Apple Inc., No. 17-585 (D. Del. Sept. 19, 2018) (Fallon).


District Court: Inequitable conduct and IPR The Court granted the plaintiff’s motion to strike an inequitable conduct defense based on alleged misrepresentations made during an IPR. The Court noted however, that inequitable conduct is possible during an IPR, but the facts pled here did not rise to that level. Finjan, Inc. v. Cisco Sys., Inc., No. 17-cv-00072-BLF (N.D. Cal. Sept. 13, 2018) (Freeman).


PTAB: Discretionary denial based on advanced stage of district court proceeding. After denying a petition under 35 U.S.C. § 325(d), the Board separately denied the petition under § 314(a) finding that institution would be an inefficient use of the Board’s resources given the advanced state of the co-pending district court proceeding. Because the patent was expired, the Board reasoned that the district court will analyze and resolve the same issues in its trial before any PTAB trial concludes. HK Spring Co., Ltd., v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (Sep. 12, 2018) (Ankenbrand, joined by Kaiser and Roesel).


PTAB: No collateral estoppel until Federal Circuit decision. The patent owner argued that the petitioner was collaterally estopped from arguing that a document qualified as a printed publication. In a previous IPR, currently on appeal to the Federal Circuit, the Board found the claims not unpatentable because the same petitioner failed to establish that the document qualified as a printed publication. The Board refused to apply collateral estoppel based on that final written decision, finding that final written decisions of the Board constitute final decisions for collateral estoppel purposes only after a review by the Federal Circuit. Samsung Elecs. Co., LTC. V. M & K Holdings Inc., IPR2018-00698, Paper 12 (Sept. 12, 2018) (Easthom, joined by Haapala and Fenick).


PTAB: Board confirms that § 325(d) does not apply to petitions filed on the same day. The patent owner urged the Board to deny institution of a petition under 35 U.S.C. § 325(d) because petitioners filed five petitions against the same patent on the same day. The Board refused, noting that the statute makes clear that 35 U.S.C. § 325(d) is directed to prior art or arguments previously presented to the Patent Office, not to prior art or arguments presented concurrently. Intex Recreation Corp. v. Team Worldwide Corp., IPR2018-00870, Paper No. 14 (September 14, 2018). (Jeschke joined by Bunting and Mayberry).


New SOPs for the PTAB The Board has substantially revised its Standard Operating Procedures (“SOPs”) for paneling of matters before the Board (SOP1) and precedential and informative decisions (SOP2).

Revised SOP1 explains the procedures for panel assignment and for informing parties regarding panel changes. It also explains the process for designating panels with more than three judges, and notes that such panels should be rare and will only occur with the approval of the Director.

Revised SOP2 creates a Precedential Opinion Panel (POP), typically comprising the Director, the Commissioner for Patents, and the Chief Judge of the PTAB. The POP will serve two primary functions: (1) it may be convened to rehear matters in pending trials and appeals, for example on issues of exceptional importance; and (2) it may assist the Director in determining whether a decision previously issued by the Board should be designated as precedential or informative. The Board expects that the POP and the procedures described in revised SOP2 will, in most cases, replace the prior practice of expanded paneling under SOP1, with a process that is more transparent and predictable. The Board also expects that revised SOP2 will result in more decisions being designated as precedential.


*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.), Benjamin Evans, Janna Fischer, Christopher Geyer, Jason Heidemann, Wing Liang, Sandip Patel, Krupa Parikh, Rebecca Rabenstein, Rangan Ramasamy, David Roadcap, Stevan Stark, Todd Siegel, Amy Simpson, 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.