The Current Roundup

CAFC: Dice game found ineligible for patenting. The examiner rejected the applicant’s claims for a dice game as directed to an abstract idea ineligible for patenting under § 101. The method included placing wagers on whether certain die faces will appear face up, rolling the dice, and paying a payout amount if at least one wagered outcome occurs—steps that the court found were conventional and did not define an inventive concept. The Board affirmed and so did the Federal Circuit. The markings on die faces, even if unconventional, bore no functional relationship to the die substrate and were therefore patent-ineligible under printed matter doctrine. Judge Mayer concurred in the result, but disagreed that the § 101 question might contain underlying questions of fact. He also disagreed that claims that “endeavor to influence human behavior rather than effect technological change” can ever be eligible for patenting. In re Marco Guldenaar Holding B.V., No. 2017-2465 (Dec. 28, 2018) (Chen, joined by Mayer and Bryson; Mayer concurring)

District Court: PTAB survival weighs against staying injunction. The defendants moved to stay a permanent injunction pending appeal of their loss in district court. The plaintiff opposed the stay, arguing that the defendants had not made the requisite “strong showing” that they would likely succeed on appeal because the claims had already survived another § 101 challenge at the PTAB and the Federal Circuit affirmed. The district court agreed, but granted the defendants a 90-day stay so that the injunction would not take effect during the busy holiday season when they could not implement a workaround. Solutran, Inc. v. U.S. Bancorp and Elavon, Inc., No. 13-cv-02637, ECF No. 456 (D. Minn. Dec. 19, 2018) (Nelson).

District Court: SAS, Shaw, and the scope of the IPR estoppel. The plaintiff moved for summary judgment of nonobviousness after the PTAB entered final written decisions upholding several asserted claims, contending that the defendant was estopped under § 315(b) from pursuing obviousness over printed publications that were not in the IPRs. Pointing to Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016)), the defendants argued that the estoppel did not apply except to the prior art that was actually raised during the instituted IPR—and therefore prior art that was not in their petitions was shielded from the estoppel. In a detailed opinion, the Court disagreed: the IPR estoppel applies to the prior-art publications that the defendants admittedly knew about but did not include their petitions. The court recognized that the “courts since Shaw have grappled with [its] implications,” but since SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018), Shaw’s “redundant ground” fact pattern can no longer occur and is not at issue here. The court also rejected the defendants’ attempt to avoid the estoppel by contending that the information in the publications was also “known or used” prior art under § 102(a) (pre-AIA). The court, however, did not apply the estoppel to a report, slides, and associated emails where the nature of the evidence was more closely related to the motivation to combine and “problems with the ‘public accessibility’ of the knowledge implicated by the emails and testimony abound.” Cal. Inst. Tech. v. Broadcom Ltd., No. 2:16-cv-03714, ECF No. 830 (C.D. Cal. Dec. 28, 2018) (Wu).

For more cases addressing Shaw and the IPR estoppel, see the September 14, 2018 and January 26, 2018 PTAB Roundups.

District Court: Stay pending IPR except third-party discovery and discovery already served. After weighing the factors, the Court granted a partial stay. Third-party discovery was allowed to proceed because all of the accused systems were under the control of third parties that were not obligated to preserve documents. As for discovery already served, the Court had already ordered the parties to produce requested materials that had not yet been produced. The Court stayed all other proceedings and deadlines.Semco, LLC v. Trane U.S., Inc., No. 2:17-cv-04077, ECF No. 136 (W.D. Mo. Dec. Jan. 2, 2019) (Wimes).

PTAB: Additional discovery granted despite court’s protective order. The patent owner sought additional discovery to compel the petitioner to produce copies of deposition transcripts and exhibits that were subject the court’s protective order in the parallel, but stayed, district court litigation. The Board granted the discovery after weighing the Garmin factors and further noting that the requested evidence is needed in five related IPRs proceeding on different schedules. While the patent owner may have had time to ask the district court to lift the stay and modify the protective order in the lagging cases, it would not for the cases that are further along.Taylor Made Golf Company, Inc. v. Parsons Xtreme Golf, LLC, IPR2018-00675, Paper No. 35 (December 20, 2018).

PTAB: Objective evidence of copying not enough to move the needle. For the purposes of its decision, the Board assumed that the alleged copying occurred. The act of copying the claimed invention, however, “did not outweigh the strong showing of obviousness made by Petitioner in this proceeding” and the Board did not “discern [any] hindsight bias in Petitioner’s asserted rationale for combining the disclosures.” Multi Packaging Solutions, Inc., v. CPI Card Group Inc., IPR2017-01650, Paper No. 36 (January 4, 2019) (Obermann, joined by Kaiser and Abraham).

PTAB: Sanctions for improper ex parte communications. The petitioner moved for sanctions after the final written decision, alleging that the patent owner’s former CEO sent improper ex parte communications to the Chief Administrative Patent Judge that requested, among other things, judgment entered in the patent owner’s favor and dismissal of the instituted petitions. The patent owner contended that the letters merely illustrated a systemic concern and that the communications were not so egregious to warrant sanctions. The Board panel, now consisting of the Deputy Chief and two Vice Chief Administrative Patent Judges, disagreed, but did not enter judgment in favor of the petitioner. Instead, it allowed the petitioner to file a request for rehearing that would be decided by an entirely new panel. Apple Inc. v., Inc., IPR2016-01198 and IPR2016-01201, Paper 70 (Dec. 21, 2018).

PTAB: Counsel should read the Board’s notices. The petitioner did not notice that it failed to upload the exhibits with its petition. In the Notice of Filing Date, the Board noted the defect and gave the petitioner five days to file the missing exhibits. After missing that deadline, the petitioner moved to excuse a late filing of exhibits, contending it was a clerical error that did not prejudice the patent owner and that the petitioner would be severely prejudiced because the one-year bar had since expired. The Board denied the motion because the petitioner did not correct the error when given an opportunity. Nuna Baby Essentials, Inc. v. Britax Child Safety, Inc., IPR2018-01683, Paper 11 (Dec. 18, 2018) (Dougal, joined by Daniels and Gerstenblith).

PTAB: Hearsay excluded. The patent owner moved to exclude two exhibits as inadmissible hearsay, alleging that the petitioner was relying on the exhibits to establish that certain game strategies were well known in gaming for centuries, that is, for the truth of the matter asserted. The petitioner opposed, arguing that the exhibits contained “verbal acts” with an independent legal significance other than merely their truth. The Board disagreed, reasoning that the statements themselves did not affect a legal right. The Board also rejected petitioner’s residual-exception argument, concluding that an affidavit from the Internet Archive might establish authenticity, but it does not establish the trustworthiness of the statements contained in the exhibits. Without that, the exhibits are merely collections of statements made by people on the Internet. SuperCell OY v. Gree, Inc., PGR2018-00008, Paper 42 (Jan. 2, 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.