The Current Roundup

BREAKING – Supreme Court: The Government may not seek AIA Review. In a 6-3 decision, the Supreme Court held today that “a federal agency is not a ‘person’ who may petition for post-issuance review under the AIA.” Return Mail, Inc. v. USPS, No. 17-1594 (June 10, 2019) (Sotomayor, with Breyer, Ginsburg, and Kagan dissenting).


District Court: Pre-institution stay lifted [not lifted] after denial while request for rehearing pending. The plaintiff asserted its patent against multiple defendants in multiple venues, and some of the defendants in the Central District of California filed an IPR petition. Before the PTAB decided whether to institute, the courts in the Central District of California, the District of Nevada, and the Eastern District of New York stayed pending the IPR. The PTAB subsequently denied institution, and the petitioners requested rehearing. Meanwhile, the plaintiff moved in all three courts to lift all of the stays. The District of Nevada lifted its stay, citing the PTAB’s low rate of granting requests for rehearing. In contrast, the Eastern District of New York maintained its stay pending the petitioner’s request for rehearing. At press time, the Central District of California had not decided whether to lift its stays. Linksmart Wireless Tec., LLC v. Deep Blue Communications, LLC, No. 1:18-cv-02441 (E.D.N.Y. May. 30, 2019) (Hall); Linksmart Wireless Tech. v. Caesars Entmt. Corp., No. 2:18-cv-00862, ECF No. 67 (D. Nev. May 30, 2019) (Du); Linksmart Wireless Tech. v. Gogo Inc. et al., No. 8:18-cv-00654, etc. (C.D. Cal.).


District Court: Protective order modification for IPR amendments. After the PTAB instituted Defendant’s IPR petition, Plaintiff moved to modify the existing protective order to allow any of Plaintiff’s counsel who have not viewed Defendant’s source code to amend claims in the IPR. The Court granted the motion in part, allowing Plaintiff’s two attorneys of record in the IPR to amend the claims, subject to the establishment of an ethical wall between those two attorneys and the rest of the firm. CustomPlay, LLC v. Amazon.com, Inc., No. 9:17-cv-80884, ECF No. 127 (S.D. Fla. May 24, 2019) (Matthewman).


District Court: PTAB statements not binding in claim construction. In their claim-construction briefing, Defendants extensively cited the PTAB’s statements about claim scope found in decisions denying IPRs against the patent-in-suit. The Court rejected the defendants’ claim construction positions because the defendants failed to show that the PTAB’s statements were binding on the Court or gave rise to any estoppel or disclaimer as to the plaintiff. Blitzsafe Texas LLC v. Mitsubishi Motors Corp., No. 2:17-cv-00430, ECF No. 232 (E.D. Tex. May 22, 2019) (Gilstrap).


PTAB: Precedential Opinion Panel will hold oral hearing in review of IPR time-bar institution decision. The Board instituted review, holding that Petitioner was not time barred from filing its petition because Patent Owner did not own the patent when it served Petitioner with an infringement complaint more than one year earlier. (Paper 15). Patent Owner subsequently requested rehearing by the Precedential Opinion Panel (“POP”) and the original panel. (Paper 19, Ex. 3002). The POP agreed to review whether the one-year bar can be triggered by a party without standing to sue, ordered additional briefing by the parties, and allowed amici to submit briefs. (Paper 23). Once briefing was complete, the POP ordered an oral hearing. (Paper 35). Notably, the POP extended the IPR’s Scheduling Order by one month in view of the POP review process. (Paper 32). GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, (Original panel: Trock, Zado, and Margolies) (POP: Iancu, Hirshfeld, Boalick).


PTAB: Second IPR petition denied. Petitioner filed two IPR petitions challenged the same claims in the same patent, each relying on a different primary reference but the same secondary references. The Board ordered Petitioner to rank the two petitions “in the order in which it wishes the panel to consider the merits,” and to explain the differences between the petitions and why the Board should consider the additional petition if it institutes the first. The Board instituted the first-ranked petition and exercised its discretion to deny the second, finding that Petitioner did not “identify sufficient differences between [the two primary references] to support the inefficiencies and costs associated with instituting” the second petition. Notably, the Board is addressing a similar situation in a similar manner in each of five other groups of IPRs between the same parties. Comcast Cable Commn’s, LLC v. Rovi Guides, Inc., IPR2019-00232, Paper 14 (May 20, 2019) (Parvis, joined by Easthom and Bain); see also, e.g., IPR2019-00224 (one of six IPRs filed against the same patent); IPR2019-00279 (one of five IPRs); IPR2019-00284 (one of six IPRs); IPR2019-00299 (one of five IPRs); IPR2019-00555 (one of four IPRS).


PTAB: Not a clerical error to address the wrong reference. The Board denied Petitioner’s motion to correct a librarian’s declaration that addressed the publication of the wrong article by the correct author. The Board found that the proposed corrections—changing the declaration to address the correct reference and the facts regarding its public availability—were substantive, and could not be corrected as clerical or typographical mistakes. The Board also found that granting the motion would prejudice Patent Owner, which had already addressed the defective declaration in its preliminary response. Axis Commc’ns AB v. Avigilon Fortress Corp., IPR2019-00235, Paper 19, (June 4, 2019) (McGraw, joined by Braden and Kaiser).


PTAB: Same field of art insufficient rationale to combine. The Board denied institution, finding that Petitioner did not articulate how or why a POSITA would have combined the primary and secondary references. Similarity in the technical field, with nothing more, is not a sufficiently articulated reasoning supported with a rational underpinning as to why a POSITA would have made the asserted combination. William Wesley Carnes, Sr., Inc. v. Seaboard Intern., Inc., IPR2019-00133, Paper 10 (May 8, 2019) (Kokoski, joined by Derrick and Ankenbrand).


PTAB Statistics. In its April 2019 Trial statistics, the PTAB reports a 64% institution rate for this fiscal year through April 30, 2019. That is up from 60% and 63 % for FY 2018 and FY 2017, respectively. So far this fiscal year, 854 IPRs have been filed, along with 34 PGRs and 22 CBMs. In comparison, petitioners had filed 820 IPRs, 35 PGRs, and 27 CBMs by this time in FY 2018. In its April 2019 Appeals and Interferences statistics, the PTAB reports that it has only 9,452 pending appeals, down from 11,021 this time last year and a high of 26,570 in FY 2012.


PTAB Boardside Chat Webinar. The next installment in the PTAB’s Boardside Chat webinar series is Thursday, June 20, 2019, when Chief Clerk Erica Swift and Deputy Clerk Kulunie Cannon will present “Hearings Guide.”


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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 Geyer, Arvind Jairam, Lisa Mandrusiak, Joel Merkin, Sandip Patel, Krupa Parikh, Rebecca Rabenstein, Rangan Ramasamy, and David Roadcap.*