The Current Roundup

CAFC: Joined parties may appeal IPR decision. The Board instituted the first petitioner’s IPR, and three days later, three more parties each filed their own petitions accompanied by motions for joinder. The Board joined all three petitioners, each of which relied on the joinder exception to the one-year bar. The patent owner prevailed on the merits and the three joined petitioners appealed, but the first petitioner did not. Before affirming on the merits, the Federal Circuit held that the three joined petitioners each possessed Article III standing and that the statute grants any party to the IPR the right to appeal an unfavorable Board decision. Mylan Pharms. Inc. v. Res. Corp. Techs., Inc., Nos. 2017-2088, 2017-2089, 2017-2091 (Feb. 1, 2019) (Lourie, joined by Bryson and Wallach).


CAFC: Post-SAS PTAB properly considered non-instituted grounds on rehearing.The Board instituted two of the three petitioned grounds, finding the third “moot.” Certain claims survived the final written decision, and the Board granted the petitioner’s request for reconsideration based on the non-instituted ground. After another round of briefing and expert testimony, the Board found the claims unpatentable. On appeal, the Federal Circuit rejected the patent owner’s procedural arguments. The Board did not exceed its statutory authority because, after SAS, the Board must consider all of the petitioner’s proposed grounds in an instituted IPR. There was also no due process violation here because the parties took additional discovery and submitted additional briefing and evidence. AC Techs. S.A. v. Amazon.com, Inc., No. 2017-1433 (Jan. 9, 2019) (Stoll, joined by Moore and Schall).


CAFC: When anticipation is the “epitome of obviousness.” The Board agreed with the petitioner that the claims would have been obvious because the primary reference taught all of the claim elements. The Federal Circuit affirmed, explaining that no motivation to combine was necessary because no combination was made—the secondary reference was used only to explain the meaning of a teaching in the primary reference. In contrast, relying on the secondary reference to teach claimed features would have required a sufficient rationale for the combination. Realtime Data, LLC v. Iancu, No. 2018-1154 (Jan. 10, 2019) (Stoll, joined by Dyk and Taranto).


CAFC: Patent term adjustment and applicant’s delay.The Federal Circuit held that the USPTO may not reduce a patent term adjustment under 37 C.F.R. §§ 1.704 by more than that “period of time during which the applicant fails to engage in reasonable efforts to conclude prosecution.” During examination of its U.S. patent application, the applicant did not file an IDS reporting art identified in foreign prosecution until 646 days after it filed its previous RCE and IDS. The Office counted all 646 days against the applicant even though the foreign office did not issue the communication identifying the art until day 546. The Federal Circuit reversed, agreeing with the applicant that only the last 100 days could be held against the applicant. Supernus Pharms., Inc. v. Iancu, No. 2017-1357 (Jan. 23, 2019) (Reyna, joined by Dyk and Schall).


CAFC: Patent is “by another” under § 102(e) with an additional inventor.The Board found that an earlier-filed patent was not prior art because it was not “by another.” The Federal Circuit reversed, finding that at least some of the relevant portions of the earlier patent were conceived by an additional inventor. Because the inventive entities were not the same, the earlier-filed patent was “by another” and therefore § 102(e) prior art. Duncan Parking Techs., Inc. v. IPS Group, Inc., No. 2018-1250, -1360 (Jan. 31, 2019) (Lourie, joined by Dyk and Taranto).


District Court: More on SAS, Shaw and the scope of the IPR estoppel.

Two recent cases illustrate differences in the IPR estoppel before and after SAS.

In the first, American Technical Ceramics, the district court noted that Shaw addressed a fact pattern that is no longer possible—an instituted IPR with petitioned, but non-instituted grounds. In contrast, the defendant/petitioner here reasonably could have raised the grounds at issue, but chose not to include them in its petition. The defendant is estopped from raising those non-petitioned grounds in district court now that the Board has issued its final written decision. Am. Tech. Ceramics Corp. v. Presidio Components, Inc., No. 2:14-cv-06544, ECF No. 142 (E.D.N.Y. Jan. 30, 2019) (Matsumoto).

The second case, Princeton Digital Image, presents a pre-SAS fact pattern. The Board instituted review of only some of the petitioned claims and eventually invalidated the instituted claims. The Court refused to extend the estoppel to the non-instituted claims. Certainly, the Board would have been required to institute review on all petitioned claims after SAS. But here, the IPR was pre-SAS, and the Board never issued a final written decision on the non-instituted claims. Accordingly, the estoppel did not extend to those claims. Princeton Digital Image Corp. v. Ubisoft Entm’t SA, No. 1:13-cv-00335, ECF No. 353 (D. Del. Feb. 1, 2019) (Burke).

For more cases addressing Shaw and the IPR estoppel pre- and post-SAS, see the January 14, 2019 Roundup.


District Court: IPR estoppel applies to prior-art references, not cumulative subject matter. Because the defendant demonstrated that it “could not reasonably have found” a prior-art publication before filing its IPR, the Court ruled that the publication was not subject to the estoppel even if it was cumulative to art actually raised in the IPR. The court also ruled that the defendant was not precluded from raising a prior-art product. While a party “cannot cloak its reliance upon prior art as a product…to avoid [the] estoppel,” the product here was itself a “superior and separate reference” that was not subject to the estoppel. SRAM, LLC v. RFE Hldg. (Canada) Corp., No. 1:15-cv-11362, ECF No. 102 (N.D. Ill. Jan. 25, 2019) (Lefkow).


PTAB: Discretionary denial despite likelihood of prevailing on a few claims. Petitioner challenged 23 claims on multiple grounds, but demonstrated a reasonable likelihood of prevailing only for two of the challenged claims on only one ground. The Board exercised its § 314 discretion and declined to institute because proceeding with the IPR would be an inefficient use of the Board’s time and resources. Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (Jan. 24, 2019) (Kenny, joined by Arbes and Benoit).


PTAB: No briefing on remand needed.

The Federal Circuit remanded because it “was unable to discern whether the Board found” that a particular reference taught the limitations in several dependent claims. The Board issued a decision finding that Petitioner failed to carry its burden as to that reference. On rehearing, the Board rejected Petitioner’s arguments that it was entitled to a remand brief. Petitioner had a full and fair opportunity to argue the grounds set forth in its petition. Volkswagen Group of Am., Inc. v. Emerachem Holdings, LLC, IPR2014-01558, Paper 80 (Jan. 30, 2019).


*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.), Benjamin EvansChris GeyerEugene GoryunovJanna FischerJason HeidemannWing H. LiangKrupa ParikhSandip PatelRebecca RabensteinRangan RamasamyDavid 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.