PTAB Roundup

CAFC: Issue preclusion arising from a Rule 36 summary affirmance. In an earlier appeal involving the same patent owner and related patents, the Federal Circuit summarily affirmed several PTAB IPR decisions under Rule 36. That summary affirmance collaterally estopped the patent owner from revisiting in this appeal whether the Board correctly found that a particular document is a prior-art printed publication. As patent owner’s counsel admitted during oral argument, the issue was necessary to the previous Rule 36 judgment. VirnetX Inc. v. Apple, Inc, Nos. 2017-2490, 2494 (Dec. 10, 2018) (O’Malley, joined by Newman and Chen).

District Court: Patent owner bound by its PTAB arguments. The Court granted the defendant’s motion for summary judgment of non-infringement based on claim construction arguments that the patent owner made in an IPR. While the PTAB did not expressly adopt the patent owner’s arguments, they were nonetheless binding on the patent owner because they “put the public on notice of how the patent owner views its patent.” F5 Networks, Inc. v. Radware, Inc., Case No. 3:17-cv-03166, ECF No. 173 (N.D. Cal. Nov. 19, 2018) (Chhabria).

District Court: Early summary judgment on assignor estoppel.After the defendant filed an IPR petition against the asserted patent, the plaintiff requested leave to file an early motion for summary judgment of assignor estoppel. Noting that the PTAB does not recognize the doctrine of assignor estoppel, the Court agreed to allow the plaintiff to file an early motion for summary judgment of assignor estoppel because if that motion were granted, “[the defendant’s] validity challenges in the IPR proceeding would be nullified due to the estoppel effect of the doctrine.” The court continued, stating that a summary judgment that assignor estoppel applies here “may impact the viability of the pending IPR proceeding, and would eliminate the invalidity defenses regarding the [patent-in-suit] from the litigation.” AgroFresh Inc. v. Mirtech, Inc., Case No. 1:16-cv-00062, ECF No. 310 (D. Del. Nov. 16, 2018, redacted Nov. 28, 2018) (Fallon).

District Court: Adding IPR art and arguments to invalidity contentions. After the plaintiff amended its infringement contentions, the Court allowed the defendant to supplement its invalidity contentions with three references and arguments regarding the priority date of two other references. The Court found no prejudice to the plaintiff because the defendant had presented the art and arguments months ago in its IPR of the patent-in-suit. “[T]he record does not show that allowing those amended contentions to stand would permit the sort of ambush litigation that the Local Patent Rules and the Federal Rules of Civil Procedure were designed to prevent.” Sandbox Logistics LLC v. Proppant Express Investments LLC, Case No. 4:17-cv-00589, ECF No. 366 (S.D. Tex. Nov. 28, 2018) (Hanks).

PTAB: The Board’s discretion to deny under 35 U.S.C. § 314(a).

The Board reached opposite results in two institution decisions issued the same day involving different patents but the same petitioners and same patent owner. In both cases, the first petitioner filed its IPR against the relevant patent shortly after this later petitioner was sued for infringement, and this later petitioner filed its own IPR after the first preliminary response but before the Board issued its institution decision.

In the instituted case, there was some overlap in the grounds, but the
later-filed petition used some different art and challenged twice as many
claims. The Board refused to assume when the later-filing petitioner became aware of the overlapping art, and the patent owner did not point to any portions that were tailored to address issues raised in the earlier-filed IPR. In addition, the Board “recognize[d] the importance of the availability of inter partes review to parties accused of infringement, particularly where, as here,” there is not “unduly extensive overlap” and “the number and timing of the petitions appear to be a direct result of Patent Owner’s own litigation activity filing seriatim lawsuits against multiple defendants.” Also, this additional IPR did not significantly impact the Board’s ability to issue a final decision within each IPR’s one-year time limit because the proceedings were staggered by five months. Nichia Corp. v. Doc. Sec. Sys., IPR2018-01166, Paper 9 (Nov. 30, 2018) (Hagy, joined by Moore and Dougal).

The Board exercised its statutory discretion to deny institution the other IPR, finding that “around three-quarters of the claim-by-claim analysis…applies prior art in the same way.” The Board concluded that the petitioner likely learned of these references shortly after it was sued and would obtain “significant future benefit” from the patent owner’s response in the first-filed IPR. Further, the Board found that “[i]ssuing final written decisions addressing substantially similar issues on different evidentiary records around five months apart is, on its face, an inefficient use of the finite resources of the Board.” Nichia Corp. v. Doc. Sec. Sys., IPR2018-01167, Paper 10 (Nov. 30, 2018) (Benoit, joined by Moore and Dougal).

PTAB: More on real party-in-interest. The Board instituted review of RPX’s petition, finding that a barred party was not a real party-in-interest to this IPR even though it was a member of RPX. Mere membership in an association is insufficient by itself to confer real party-in-interest status in an IPR filed by the association. Further, there was no reason to conclude that RPX filed the IPR on the barred party’s behalf: the barred party was accused for infringement, but the Federal Circuit had already affirmed the district court’s judgment of noninfringement. RPX Corp. v. Publishing Techs., LLC, IPR2018-01131, Paper 10 (Dec. 3, 2018) (Elluru, joined by Pothier and Jivani).

PTAB: Divided Board excuses procedural missteps in motion to amend.The patent owner’s non-contingent motion to amend used incorrect line spacing and proposed substitute claims depending from original (and therefore canceled) claims. The petitioner pointed out these deficiencies in its opposition, and the patent owner proposed new amendments its reply, fixing the dependencies in challenged claims and in some unchallenged, and previously unaddressed, claims. The majority refused to consider the newly proposed substitute claims for the unchallenged claims, but otherwise proceeded as if the reply was a proper additional motion to amend and gave the patent owner a five-page surreply to address any issues raised by the new amendments. The dissent disagreed with the majority’s decision to waive the page-limit requirement, and would have found that the patent owner failed to demonstrate good cause warranting an additional motion to amend. Aver Info. Inc. v. Pathway Innovations and Techs., Inc., IPR2017-02108, Paper 27 (Nov. 30, 2018) (Beamer, joined by Giannetti; Chang dissenting).

Motion to amend comments due date extended to December 21.The USPTO published a Request for Comments (RFC) on a new procedure for motions to amend in IPRs, PGRs, and CBMs. The proposal provides an all-new timeline: the patent owner will file a motion to amend at the six-week point, the petitioner has six weeks to respond, and then the Board delivers a preliminary non-binding decision. After that, the patent owner may reply or file a revised motion to amend addressing issues raised in the Board’s preliminary decision, and petitioner may file a surreply or opposition to the revised motion, as appropriate. For more details, see the  the PTAB’s announcement.

*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.), Chris Geyer, Eugene Goryunov, Janna Fischer, Jason Heidemann, Wing H. Liang, Krupa Parikh, Sandip Patel, Rebecca Rabenstein, David Roadcap, 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.