PTAB Roundup

CAFC: Graphical user interface claims ineligible for patenting. The Court affirmed three PTAB CBM decisions, agreeing that the patents were eligible for CBM review and did not fall into the “technological invention” exception, and were also ineligible for patenting. Although the Court had previously held in non-precedential opinions that related patents claimed technological inventions or eligible subject matter, these determinations “depend on what is claimed, not all that is disclosed in the specification.” The claims here were “directed to the abstract idea of graphing (or displaying) bids and offers to assist a trader to make an order,” and “help[ing] the trader process information more quickly” was not an improvement to a computer that could bestow patent-eligibility or technological invention status. Trading Techs. Int’l, Inc. v. IBG LLC, No. 2017-2257 (April 18, 2019) (Moore, joined by Mayer and Linn).


District Court: IPR estoppel may be triggered at least until final judgment. After trial, the Court entered final judgment of invalidity for obviousness-type double patenting, but did not reach the defendants’ arguments that the claims were also obvious over the prior art. The plaintiff appealed to the Federal Circuit, and while the litigation was on appeal, the PTAB issued final written decisions upholding all but one of the asserted claims in co-pending IPRs. The Federal Circuit subsequently reversed the District Court’s decision on obviousness-type double-patenting, and the case returned to the District Court. On remand, the plaintiff moved to estop the defendants’ as-yet unresolved obviousness defenses under 35 U.S.C. § 315(e)(2). The Court held that the IPR estoppel applied to all of the patent claims subject to the PTAB’s final written decisions, but did not reach the one claim where no IPR was instituted. Novartis Pharms. Corp. v. Par Pharm. Inc., No. 1:14-cv-01289, ECF No. 198 (D. Del. Apr. 11, 2019) (Andrews).


District Court: More on IPR estoppel including post-SAS remand. The IPR estoppel extended to the instituted grounds after the challenged claims survived a pre-SAS, partially instituted IPR. As for the denied grounds, the Court found that the defendants were also estopped from raising them because the defendants reasonably could have asked for a post-SAS remand. The Court also ruled that the defendants were not estopped from raising a particular prior-art reference absent from the petition because the plaintiff did not show that the reference reasonably could have been discovered by a skilled searcher conducting a reasonable search. F’real Foods, LLC v. Hamilton Beach Brands, Inc., No. 1:16-cv-00041, ECF No. 239 (D. Del. Apr. 11, 2019) (Connolly).


District Court: No issue preclusion arising from PTAB decision. The defendant sought to preclude the plaintiff from asserting that certain prior art does not teach a claim limitation. The Court held that that issue preclusion cannot apply because the issues are not the same: the PTAB applies the lower preponderance of evidence standard, while the Court requires clear and convincing evidence. Riddell, Inc. v. Kranos Corp., No. 1:16-cv-04496, ECF No. 318 (N.D. Ill. Apr. 17, 2019) (Kennelly).


PTAB – Precedential: Privity and real party in interest (RPI). Petitioner Ventex filed its IPR more than one year after its customer, Seirus, was sued for infringement by Patent Owner. The Board vacated its institution decision and dismissed the petition under the one-year bar of 35 U.S.C. § 315(b) upon determining Ventex failed to carry its burden of showing that no RPIs or privies, and in particular Seirus, were subject to the one-year bar. Ventex had agreed to manufacture the accused product exclusively for Seirus and to indemnify Seirus against any patent infringement claims. Ventex also admitted that it petitioned for IPR to protect its customers, including Seirus. In addition, the amounts and timing of Seirus’s payments for the accused product indicated that Seirus (not Ventex, despite the indemnity agreement) may have been funding the IPR. Petitioner Ventex asserted that the payments were for “exclusivity,” but its witnesses could not elaborate further. Ventex Co. Ltd. v. Columbia Sportswear North Am., Inc., IPR2017-00651, Paper 148 (Jan. 24, 2019) (designated April 16, 2019) (Cocks, joined by Weatherly and Marschall).


PTAB – Precedential: Updating RPIs. The Board designated as Precedential two decisions allowing petitioners to update their listed RPIs without losing the IPR or PGR filing date.

•  The Board allowed Petitioner to update its identification of RPIs while maintaining its original filing date after analyzing several factors: (1) any attempt to circumvent the § 315(b) bar or estoppel, (2) bad faith, (3) prejudice to the patent owner, and (4) gamesmanship. Here, none of the added parties were subject to the one-year bar at the time of filing and there was no attempt to evade estoppel rules, Patent Owner was not prejudiced by the delay, and Petitioner did not engage in gamesmanship or act in bad faith by updating its notices in view of recent Federal Circuit case law and without admitting the new parties are in fact real parties in interest under the governing legal standard. Proppant Express Inv., LLC v. Oren Techs., LLC, IPR2017-01917, Paper 86 (Feb. 13, 2019) (designated April 16, 2019) (Cherry, joined by Weatherly and Woods).

•  Confirming that mistakes in identifying RPIs are correctable in PGRs as well as IPRs, the Board allowed Petitioner to update its identification of RPIs to include a subsidiary (“Amneal LLC”) of an already listed entity (“Amneal Inc.”) while maintaining its filing date. The Board accepted Petitioner’s explanation that the omission was accidental rather than gamesmanship or bad faith. The Board further noted that there would be no prejudice to Patent Owner because the case had not yet been instituted, and because Petitioner named the parent, the Board was able to perform its conflict checks. Adello Biologics LLC v. Amgen, Inc., PGR2019-00001, Paper 11 (Feb. 14, 2019) (designated April 16, 2019) (Yang, joined by Paulraj and Lee).


District Court: Third try is not the charm for stay motion: The Court denied the defendant’s motion to stay pending a second ex parte reexamination of the asserted patent. The Court had previously entered a first stay pending the defendant’s unsuccessful request for inter partes review and a second stay pending the defendant’s unsuccessful first request for ex parte reexamination. The Court held that a third stay pending the second ex parte reexamination was unwarranted in light of how far the case had advanced after it lifted the second stay. MLC Intellectual Property, LLC v. Micron Tech., Inc., Case No. 3:14-cv-03657, ECF No. 388 (N.D. Cal. Apr. 1, 2019) (Illston).


District Court: PTAB claim construction permits amendment to defendant’s answer: Defendant earlier stipulated to dismissal of its noninfringement affirmative defense and counterclaim, and the Court later stayed the case pending IPR. In upholding the challenged claims, the PTAB construed a key claim term in a way that neither party proposed during the IPR. After the Court lifted the stay, the plaintiff then moved for summary judgment of infringement in district court, and Defendant moved for leave to amend its answer to add a non-infringement defense based on the PTAB’s claim construction. The district court granted leave to amend, reasoning that the defendant had not unduly delayed seeking amendment after the PTAB’s decision, the case was still at an early stage such that the plaintiff would not be prejudiced, and the amendment would not be futile. Sioux Steel Co. v. Prairie Land Millwright Servs., Case No. 1:16-cv-02212, ECF No. 134 (N.D. Ill. Mar. 29, 2019) (Gottschall).


PTAB – Precedential: Exhibits with rehearing request. Evidence not already of record will not be considered on rehearing absent good cause. “Ideally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue ‘good cause’ exists for admitting the new evidence.” Here, the Board expunged the exhibits because the party did not request permission or establish good cause. Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19 (Jan. 8, 2019) (designated Apr. 5, 2019).


PTAB – Informative: Institution denied when only a few challenges pass muster. The Board recently designated as Informative two decisions on this topic:

•  Petitioner contended that claims 1-20 would have been obvious over three prior-art references. The Board denied institution after finding that “Petitioner demonstrates, at most, a        reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.” Institution with respect to all twenty claims would not be “an efficient use of the Board’s time and resources.” Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 (Nov. 7, 2018) (designated Apr. 5, 2019) (Tornquist, joined by Ankenbrand and Heaney).

•  Petitioner covered the challenged claims with two grounds based on one primary reference and another two based on another. The Board denied institution, citing Chevon Oronite (discussed above) and reasoning that “instituting a trial with respect to all twenty-three claims and on all four grounds based on evidence and arguments directed to only two claims and one ground would not be an efficient use of the Board’s time and resources.” Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (Jan. 24, 2019) (designated Apr. 5, 2019) (Kenny, joined by Arbes and Benoit).


PTAB: Institution denied for failing to construe means-plus-function terms. Petitioner did not propose constructions for two claim terms (“a first attaching member” and “a second attaching member”), but Patent Owner contended in its POPR that they were subject to § 112, ¶ 6. The Board agreed, pointing to the specification’s description of the members as a “means for attaching” and Patent Owner’s undisputed expert testimony that the terms did not connote sufficiently definite structure. Although the Board has instituted IPR where “additional evidence may aid in the analysis of whether” a term invokes § 112, ¶ 6, the Board denied institution here because this case did not present “a close question that would benefit from further development of the record.” Becton, Dickinson and Co. v. Baxter Int’l, Inc., IPR2018-01741, Paper 8 (Mar. 18, 2019) (Goodson, joined by Grossman and Korniczky).


PTAB: Codefendant’s later-filed petitions denied. Patent Owner sued Petitioner and a codefendant for infringement based on the codefendant’s product that incorporated Petitioner’s technology. After the Board denied the codefendant’s earlier-filed IPR petition, Petitioner filed three IPRs challenging the same claims. The Board denied institution of all three after weighing the General Plastic factors. Although different parties, there was a “significant relationship” between Petitioner and its codefendant. And while the Federal Circuit’s Click-to-Call opinion meant that Petitioner would be barred even though it had been dismissed from the district-court litigation, Petitioner waited five months after Click-to-Call to file even though it knew of (or should have known of) the art in its “not one but three” petitions. “These serial and repetitive attacks implicate the efficiency concerns underpinning General Plastic.” Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, -00063, -00084, Paper 13 (April 2, 2019) (Weinschenk, joined by Vice Chief APJ Fink and Director Iancu).


PTAB: Late POPR excused and the importance of service. As evidenced by photographs of computer screens and accompanying testimony, Patent Owner believed that it had overcome its difficulties with the E2E filing system and filed its preliminary response at 11:58 p.m. on the due date, but served Petitioner 25 minutes late. Patent Owner was wrong, however, insofar as it had not completely overcome its E2E problems. There was no official record of its POPR in the system, and Patent Owner did not recognize this fact for an entire month. Nonetheless, the Board excused the late filing in the interest of justice, holding that Patent Owner provided a reasonable explanation for its failure to properly and timely file the documents and that Petitioner was not prejudiced by the “loss of 25 minutes, in the middle of the night.” Luraco Health & Beauty, LLC v. Lexor Manufacturing, LLC, IPR2019-00204, Paper 11 (April 10, 2019).


PTAB Practice Tip: Although not mentioned in the above opinion, the relevant PTAB E2E FAQ explains that:

A2. If PTAB E2E is down during normal business hours or other unscheduled outage periods, may I file a petition or other documents via email or mail?

If you have any difficulties with PTAB E2E, please call the Board at (571) 272-7822. However, if PTAB E2E is unavailable during normal business hours or other unscheduled outage periods, petitions (and other documents) may be served on opposing counsel via email, and the Board notified of the service by email copying opposing counsel: Trials@uspto.gov. The email notification to the Board should NOT include attachments.

. . .

The FAQ continues with a detailed list of requirements for such emails.


ITC: Stay pending IPR denied. Respondent sought a stay after the PTAB found the claims of one of the asserted patents unpatentable and final written decisions for the other patent were expected in a few months. The ITC denied the stay motion, reasoning that discovery in the ITC investigation had already closed, the ITC had already prepared for the evidentiary hearing, and the complainant indicated that it intended to appeal the PTAB decision holding the first patent’s claims unpatentable. In the Matter of Certain Memory Modules, Inv. No. 337-TA-1089, Order No. 49 (USITC Apr. 11, 2019).


ITC: Limited Exclusion Order suspended as to single claim, but no practical effect. After the ITC forbid respondents from importing products found to infringe several claims of the asserted patents, the PTAB found one of those claims unpatentable. The ITC suspended enforcement of the remedial orders as to claim 17 because the accused products would still be subject to immediate exclusion based on other patent claims. One Commissioner disagreed with the rationale, but supported the result, reasoning that suspending enforcement is appropriate when the PTAB finds claims unpatentable prior to the Commission’s final determination. In the Matter of Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-1058, Order No. 49 (USITC Apr. 9, 2019).


USPTO Notice: Alternate ways to amend issued claims. The Office provided a summary of current practice regarding reissue and reexamination options in which patent owners may amend claims before and after the PTAB issues a final written decision in an AIA proceeding. This notice also provides summary information about factors considered when determining whether to stay or suspend a reissue proceeding, or stay a reexamination, that involves a patent involved in an AIA proceeding, and also when and whether to lift such a stay or suspension. The PTAB and the Central Reexamination Unit further discussed these options during a PTAB Boardside Chat. The slides from that presentation are available here.


PTAB Boardside Chat Webinar. The next installment in the PTAB’s Boardside Chat webinar series is May 9, 2019, and the topic will be “Section 101.”


PTAB Roundup Spotlight. The PTAB Roundup exists only because of dedicated volunteers that find and draft concise summaries of interesting cases. The Roundup is grateful for every volunteer’s contributions, and from time to time it will publicly recognize individuals who have made consistent and outstanding contributions that have substantially benefited the entire PTAB Bar Association and its members.

Today, the Roundup puts the spotlight Kevin McNish for his outstanding contributions to the Roundup dating back to its beginning. Kevin is an associate at Desmarais LLP, where he represents patent owners and petitioners in PTAB proceedings. He is a founding member of the Roundup and the Editor for its District Court Desk. Without Kevin’s help, the Roundup would not have its consistently high-quality District Court write-ups in each issue. Please join the Roundup in thanking Kevin for his dedication, and the Roundup is excited (and grateful) that Kevin is here to help take the Roundup to the next level.


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*Note: These 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.


The PTAB Roundup gathers cases and news of interest for PTAB Bar Association members and presents them in a short, easy-to-digest format by email and website archive. Please send any comments, suggestions, or feedback to the Communications Committee.

Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Eugene Goryunov (Ed.), Arvind Jairam, Wing H. Liang, Lisa Mandrusiak, Joel Merkin, Jennifer L. O’Connell, Sandip Patel, Rebecca Rabenstein, Rangan Ramasamy, and David Roadcap.*