The Current Roundup

CAFC: “Reasonably continuous diligence” to a reduction to practice. The Federal Circuit held that the Board erred in rejecting the patent owner’s attempt to antedate a prior-art reference. The conception date of the challenged patent was undisputed, but the Board found a lack of diligence because the evidence showed gaps in the inventor’s activity accounting for “approximately half of the days during the critical period.” During those gaps, however, the invention was being tested, and the evidence confirmed the inventor’s “diligent oversight” and “persistence in moving the project…through multiple stages in a timely manner.” On an apparently unrelated evidentiary note, the Court did not fault the Board for expunging a complete deposition transcript. The appellant/patent owner filed the complete transcript without Board permission nearly three months after the appellee/petitioner filed an excerpt containing the cited portions with its Reply brief. Arctic Cat v. GEP Power Prods. Inc., No. 2018-1520 (Mar. 26, 2019) (Taranto, joined by Prost and Reyna).


CAFC: “Reasonably continuous diligence,” not “continuous reasonable diligence.”The Federal Circuit reversed final written decisions unpatentability, holding that under the correct standard, the appellant/patent owner demonstrated diligence. It was undisputed that the inventor conceived before the critical dates. For diligence, the inventor’s 60-page declaration supported by 1,300 pages of documentation demonstrated that at least one person on the development team worked towards a reduction to practice on every non-holiday business day. “The PTAB dismissed the entirety of the evidence,” stating that it was directed to unclaimed alternatives and improvements. However, a “patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence,” which the evidence established. The “purpose of the diligence requirement is to show that the invention was not abandoned or set aside,” and “[d]iligence is not negated if the inventor works on improvements and evaluates alternatives while developing an invention.” ATI Techs. ULC v. Iancu, Nos. 2016-2222, -2406, -2608 (Apr. 11, 2019) (Newman, joined by O’Malley and Wallach).


District Court: The IPR estoppel, Shaw, and SAS Institute. Plaintiff moved for summary judgment that Defendant was estopped by 35 U.S.C. § 315(e)(2)) from raising certain grounds of invalidity. The Court recognized that, before SAS Institute, the PTAB could institute on only some grounds presented by the petitioner. But here, the PTAB instituted on all proposed grounds, so the question became whether the petitioner/defendant reasonably could have raised grounds relying on prior-art publications that were not in the IPR petition. The Court granted summary judgment as to the art that formed the petitioned grounds of unpatentability (which were all instituted), and also as to references that were presented to the PTAB as background evidence. The court denied summary judgment as to other art because there was a genuine issue of material fact as to whether a skilled searcher conducting a diligent search reasonably could have been expected to find those references. Palomar Techs., Inc. v. MRSI Systems, LLC, No. 18-cv-10236, ECF No. 393 (D. Mass. Mar. 27, 2019) (Saylor).

For more cases addressing Shaw and the IPR estoppel, pre- and post-SAS, see the February 11, 2019 Roundup.


District Court: No retroactive IPR estoppel. After the Court entered final judgment of invalidity, the PTAB issued final written decisions that Defendant/Petitioner failed to demonstrate unpatentability of certain claims. Plaintiff moved to bar Defendant from “asserting” invalidity of those claims under 35 U.S.C. § 315(e)(2). The Court denied the motion, reasoning that Defendant ceased to “assert” its invalidity defenses when the Court entered final judgment of invalidity. Intellectual Ventures II, LLC v. FedEx Corp. et al., No. 16-cv-00980, ECF No. 600 (E.D. Tex. Mar. 29, 2019) (Gilstrap).


District Court: Collateral estoppel for dependent claim based on IPR decision. After Defendants filed an IPR challenging a number of patent claims, Plaintiff also asserted a dependent claim not covered by the IPR. The PTAB found all of the asserted claims unpatentable, including that dependent claim’s independent claim, leaving the dependent claim as the sole remaining asserted claim. Plaintiff/Patent Owner did not appeal the PTAB’s decision. Defendants subsequently moved for summary judgment of invalidity, contending that Plaintiff is collaterally estopped from defending claim 11’s validity. The Court agreed. Affirmed PTAB decisions have preclusive effect, and the differences between the adjudicated independent claim and the non-adjudicated dependent claim did not materially alter the question of invalidity. Intellectual Ventures I, LLC v. Lenovo Group Ltd. et al., No. 16-cv-10860, ECF No. 244 (D. Mass. Apr. 4, 2019) (Saris).


District Court: Sua sponte dismissal after statutory disclaimer at PTAB. Defendant sought judgment of noninfringement of certain patents on the pleadings under Fed. R. Civ. P. 12(c) after Plaintiff statutorily disclaimed the only asserted claims in those patent with its preliminary responses in co-pending IPRs. Plaintiff opposed, contending that such a judgment would be overbroad and impose claim preclusion as to all claims. The Court did not reach the parties’ motion, but instead sua sponte dismissed without prejudice as moot. The case proceeded on the unaffected patent. Lemaire Illumination Techs., LLC v. HTC Corp., Case No. 2:18-cv-00021, ECF No. 50 (E.D. Tex. Apr. 4, 2019) (Gilstrap).


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: Motion to amend denied for adding new matter. A motion to amend may not enlarge the scope of the claims or add new matter. 35 U.S.C. § 316(d)(3). Here, Patent Owner sought to add a negative limitation reciting “wherein the sound bores [in a type of earphone] are not adjoined by mechanical coupling.” The Patent Owner contended that adding this feature did not enlarge the scope of the issued claim because the substitute claim still contained all of the limitations of the issued claim. The Board denied the motion, finding that the inventor was not in possession of the negative limitation, i.e., where the “sound bores could be but purposefully were not adjoined by mechanical coupling.” (emphasis in original). Because the claims lacked written description support in the as-filed application, the proposed amendment impermissibly added new matter. 1964 Ears, LLC v. Jerry Harvey Audio Holding, LLC, IPR2017-01084, Paper 60 (Apr. 2, 2019) (Horvath, joined by McNamara and Moore).


ITC: Investigation stayed pending IPR. Respondents moved to stay the investigation pending Federal Circuit review of IPR decisions canceling all claims asserted in the investigation. Complainant did not oppose, noting that it agreed that “judicial economy weighs in favor of a stay pending resolution of the appeal.” After applying its five-factor test, ALJ Bullock agreed to stay the case, noting that “this Investigation presents exceptional circumstances” because both parties and the Office Staff attorney agree a stay is warranted and the parties are “unaware of any other Investigation that proceeded to hearing after the PTAB found all asserted patent claims to be invalid prior to the hearing.” In the Matter of Certain Integrated Circuits With Voltage Regulators and Products Containing Same, Inv. No. 337-TA-1024, Order No. 55 (USITC Aug. 31, 2018) (Bullock).


PTAB Boardside Chat Webinar. The next installment in the PTAB’s Boardside Chat webinar series is Thursday, April 18, 2019. Judges Michelle Ankenbrand, Phil Kauffman, and Trevor Jefferson will discuss “Supplemental Information vs. Supplemental Evidence.”


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 Kenneth Weatherwax for his outstanding contributions to the Roundup dating back to its beginning. Ken is a founding and co-managing partner at Lowenstein and Weatherwax, and is also a founding member of the Roundup and the Editor for its Appellate Desk. Without Ken’s help, the Roundup would not have its consistently high-quality Appellate write-ups in each issue. Please join the Roundup in thanking Ken for his dedication, and the Roundup is excited (and grateful) that Ken 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.), Chris Geyer, Lori Gordon, Lisa Mandrusiak, Sandip Patel, Rebecca Rabenstein, Rangan Ramasamy, David Roadcap, and James Stein.*