PTAB Roundup

CAFC: No Standing for Petitioner not practicing challenged claims. The Federal Circuit dismissed an IPR appeal because the appellant petitioner failed to “supply the requisite proof of an injury in fact.” Taking all of its allegations as true, Petitioner did “not show[] that it is engaging in, or has nonspeculative plans to engage in, conduct even arguably covered by the upheld claims.” The history of litigation between the parties on different technology might “reduce customer’s goodwill” but did not establish “the concrete interest required for standing.”  The Court also rejected the appellant’s arguments that it is injured by the IPR estoppel. First, the IPR estoppel does not constitute an injury in fact in this situation. Second, the Federal Circuit has not yet decided whether the estoppel is triggered when “the IPR petitioner lacked Article III standing to appeal the Board’s decision to this court,” and the parties did not brief that issue.  AVX Corp. v. Presidio Components, Inc., No. 2018-1106 (Fed. Cir. May 13, 2019) (Taranto, joined by Newman and O’Malley).

CAFC: Patent owner has standing to appeal IPR decision on expired patent; CAFC not bound by parties’ claim construction arguments. The patent owner appealed the PTAB’s decision finding its expired patent’s claims unpatentable. The Director of the PTO intervened to defend the agency’s decision because the IPR petitioner declined to defend its win, the parties having settled the concurrent infringement litigation. The Federal Circuit held sua sponte that the patent owner had standing to appeal, as an expired patent may form the basis for a suit seeking past damages. Judge Newman dissented. She would have dismissed, reasoning that there was no live controversy without a currently pending infringement suit.

On the merits, the majority vacated the PTAB’s decision. The patent owner had argued in the IPR that a particular means-plus-function term was computer-implemented and required an algorithm. The PTAB disagreed, holding that it was implemented in hardware. On appeal, the patent owner adopted the PTAB’s hardware-implemented construction. The Court, however, disagreed. Stating that it is “not bound by the parties’ arguments as to claim construction,” the Federal Circuit held sua sponte that the patent owner’s “original position was correct.” The Court identified an algorithm and remanded to the PTAB for determination if the art discloses that algorithm. Sony Corp. v. Iancu, No. 2018-1172 (Fed. Cir. May 22, 2019) (Dyk, joined by Prost; Newman dissenting).

CAFC: Issue preclusion triggered by previous IPR.  In affirming the PTAB’s obviousness determination in an IPR, the Federal Circuit rejected one argument as waived, as the issue was not raised until appeal. The Court rejected two more of the appellant’s arguments as barred by issue preclusion. Both were already fully litigated in earlier IPRs, and the appellant voluntarily dismissed its appeals of those decisions, and in any event, both failed on the merits. The Court also declined to reach a claim construction argument that the PTAB also declined to reach because, as the PTAB recognized, the appellant did not identify any way that its proposed construction could have affected the PTAB’s unpatentability determination. Papst Licensing GmbH & Co. KG v. Samsung Elecs. Am., Inc., No. 2018-1177 (Fed. Cir. May 23, 2019) (Taranto, joined by Dyk and Chen).

CAFC: Specific arguments not raised were waived. The Federal Circuit affirmed the PTAB’s IPR determinations of unpatentability of claims of two patents. The Court agreed with the PTAB’s claim constructions and the PTAB’s factual findings were supported by substantial evidence. Notably, the appellant patent owner’s arguments that the art failed to teach a specific type of “prioritization” were waived because the patent owner had argued before the PTAB only that the prior art “did not teach prioritization at all,” not that it taught the wrong type of prioritization.  Bradium Techs. LLC v. Iancu, Nos. 2017-2579, -2580 (Fed. Cir. May 13, 2019) (Reyna, joined by Moore and Chen).

District Court: Pre-institution stay granted. Defendant filed an IPR petition three months after Plaintiff filed suit, and moved to stay the litigation. The Court stayed the case, citing its early stage, the lack of competition between the parties, and the PTAB’s upcoming deadline to decide whether to institute the defendant’s petition. “If instituted, the PTAB’s decision on patentability will narrow and simplify the issues in this case. And if not instituted, then the stay will be short in duration, lasting only a few months.” MEC Resources, LLC v. Vishay Ams., Inc., No. 3:18-cv-02770, ECF No. 25 (N.D. Tex. May 6, 2019) (Godbey).

District Court: No stay absent agreement to be estopped by third-party IPRs. Defendant moved to stay litigation in view of third-party IPRs instituted against the asserted patents. Although Defendant agreed to a limited estoppel (i.e., to be barred from raising any invalidity grounds actually raised in the IPRs), it refused to agree to be barred by the full scope of the statutory estoppel (i.e., any grounds that reasonably could have been raised in the IPR). The Court denied the stay, explaining that Defendant’s refusal significantly reduced the likelihood that the issues before the Court would be simplified by the IPRsRealtime Adaptive Streaming LLC v. Adobe Sys. Inc., No. 2:18-cv-09344, ECF No. 75 (C.D. Cal. May 14, 2019) (Wu).

District Court: IPR decision cancelling claims moots litigation. Defendant won its concurrent IPRs while the litigation was stayed, and Plaintiff moved to dismiss the case without prejudice as moot. Defendant agreed the case was moot, but contended the case should be dismissed with prejudice and that it should be awarded attorneys’ fees. The Court dismissed the case as moot—without prejudice—because mootness is a lack of jurisdiction, not a decision on the merits. And because the district court’s dismissal was without prejudice, it declined to award fees. There was no “prevailing party” for attorneys’ fees under 35 U.S.C. § 285, and Defendant did not identify any other viable theory justifying an award. Transport Techs., LLC v. Los Angeles Metropolitan Trans. Authority, No. 15-cv-6423, ECF No. 81 (C.D. Cal. May 8, 2019) (Lew).

PTAB: Post-hearing claim construction briefing. During oral argument, the Board raised questions concerning the construction of a particular claim term. After the hearing and further consideration, the Board presented the parties with a dictionary definition of the term and ordered them to brief whether that definition reflected the term’s ordinary and customary meaning, whether the intrinsic evidence limits the broadest reasonable interpretation of the term, and whether the dictionary definition affects the party’s contentions as to the broadest reasonable interpretation of the term. Quest USA Corp. v. Popsockets LLCIPR2018-00497, Paper 48 (May 14, 2019) (Zado, joined by Kaiser and Margolies).

PTAB: Duplicative of District Court proceeding warrants denial. Applying the newly designated precedential case, NHK Spring Co. v. Intri-Plex Techs., IPR2018-00752, Paper 8 (Sept. 12, 2018) (precedential), the Board denied institution because Petitioner “presents the same issues, arguments, and evidence” as in the District Court. The District Court had already issued a detailed order granting a preliminary injunction, issued its claim-construction order, and trial is scheduled to occur in eleven months. E-One, Inc. v. Oshkosh Corp.IPR2019-00161, Paper 16 (May 15, 2019).

PTAB: Unclear which documents are the asserted prior art. The Board denied institution because Petitioner failed to sufficiently set forth its grounds of unpatentability and identify with particularity which documents formed the basis of its challenge. Petitioner (and its expert) cited to a large number of different documents, but in its reply to the POPR, Petitioner asserted that only some of them were its prior-art printed publications and that the rest were evidence of the ordinary artisan’s background knowledge. Petitioner and its expert, however, relied on those alleged background references to teach certain claim elements. Investors Exchange, LLC v. NASDAQ Tech. ABIPR2018-01796, Paper 11, (May 6, 2019) (Petravick, joined by Turner and Sawert).

PTAB: Petition lacks cites to prior art. The Board denied institution for several reasons. First, Petitioner “essentially forgoes citation to the asserted prior art references” and instead cited only on its supporting expert declaration. This amounted to an improper incorporation by reference, and as such, warranted denial of the petition. Second, Petitioner failed to carry its burden because it provided only “bare attorney argument” without “a single citation to record evidence” with respect to the construction of a particular claim limitation. This, too, justified denying institution. Third, Patent Owner directed the Board to “persuasive evidence” contradicting Petitioner’s assertions. Intervet Inc. v. Boehringer Ingelheim Vetmedica, Inc.IPR2018-01788, Paper 9 (Apr. 16, 2019) (Obermann, joined by Scheiner and Yang).

PTAB: Inventor testimony admissible. After Patent Owner filed its Preliminary Response to the Petition, Petitioner sought to file the transcript of the named inventor’s deposition. The deposition occurred after the petition was filed, and according to Petitioner, contradicted Patent Owner’s arguments. Patent Owner sought to exclude the evidence as irrelevant and “inconsistent with Patent Owner’s position,” but the Board disagreed. The case law cited by Patent Owner pertained to the weight to be given to inventor testimony, not its admissibility, and the Federal Circuit “has relied on such testimony.” Semiconductor Components Indus. LLC v. Power Integrations, Inc.IPR2018-01815, Paper 10 (Apr. 16, 2019) (Jefferson, joined by Kalan and Howard).

PTAB Boardside Chat Webinar. The next installment in the PTAB’s Boardside Chat webinar series is June 9, 2019, when Vice Chief Judge Michael Tierney will present “Broadest Reasonable Interpretation v. Phillips.”

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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.), Chris GeyerArvind JairamWing H. LiangLisa MandrusiakSandip PatelRebecca Rabenstein, and Rangan Ramasamy.*