The Current Roundup

CAFC: Petitioner bears burden to show that it is not barred. The Federal Circuit clarified that the petitioner bears the burden of persuasion to demonstrate that its petition is not time-barred under 35 U.S.C. § 315(b). The petitioner’s initial identification of the real party in interest does not create a “rebuttable presumption,” but as a practical matter, it should be accepted until the patent owner provides “some evidence” to the contrary. Applying the rule to this case, the Court remanded because the patent owner provided evidence—an agreement between a barred party and this petitioner— sufficient to put the issue into dispute. The Court also cautioned the Board against relying on mere attorney argument that the barred party was not controlling or funding the IPR. Worlds Inc. v. Bungie, Inc., No. 2017-1481, -1546, -1583 (Fed. Cir. Sept. 7, 2018) (Prost, joined by O’Malley and Taranto).


CAFC: Proper scope of a reply. The Board had confirmed the validity of the patentee’s claims, ruling that some of the petitioner’s reply arguments exceeded their permissible scope. The Federal Circuit vacated and remanded, explaining that “[t]he Board’s error was parsing [petitioner’s] arguments on reply with too fine of a filter.” The Board’s “error was exacerbated” because “the Board adopted a different construction…after…inter partes review was granted,” i.e., by adopting a claim construction presented in the patent owner’s response that was not disputed in the petitioner’s reply. Ericsson Inc. v. Intellectual Ventures I LLC, No. 2017-1521 (Aug. 27, 2018) (Reyna, joined by Taranto and Chen).


CAFC: 2-D Drawings and 3-D Designs. The Federal Circuit reversed enablement and indefiniteness rejections of a 3-D design patent claim showing only a 2-D plan view of the bottom of an athletic shoe. The examiner had reasoned that the 2-D plan view was open to multiple interpretations regarding the depth and contour of the claimed elements. The Court disagreed. The claim was not indefinite just because it could cover three-dimensional shoe bottoms of multiple “possible depth choices.” In re Maatita, No. 2017-2037 (Aug. 20, 2018) (Dyk, joined by Reyna and Stoll).


District Court: Post-SAS and despite Shaw, IPR estoppel applies to non-instituted grounds that petitioner failed to appeal. The Board instituted the defendant’s IPR on only some claims and grounds. The Supreme Court decided SAS after the Board issued its final written decision, but before the defendant’s time to appeal the IPR expired. The defendant, however, did not appeal the Boards’s partial institution. From that, the district court concluded that the defendant reasonably could have raised the non-instituted claims and grounds before the Board and was therefore estopped from doing so in court. SiOnyx, LLC v. Hanamatsu Photonics KK, No. 15-13488, ECF No. 566 (D. Mass. Aug. 30, 2018) (Saylor).


District Court: PTAB denial of IPR institution for indefiniteness. In determining whether the patent adequately disclosed an algorithm under § 112(f), the court found the Board’s denial of institution helpful. The Board wrote that it was “unable to locate any disclosure in the [asserted] Patent Specification of an algorithm, expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides structure to enable the microprocessor to perform the [claimed] function.” The Court agreed after analyzing the patent-at-issue. Intelligent Automation Design, LLC v. Zimmer Biomet CMF, No. 3:16-cv-1044, ECF No. 126 (M.D. Fla. Aug. 28, 2018) (Davis).


PTABGeneral Plastic applies across co-defendants. The Board denied institution of a party’s first petition because the patent owner had already filed a preliminary response in another IPR against the same patent filed by a co-defendant. The Board inferred that this petitioner “strategically stage[d]” its prior art and arguments because it covered a narrower claim construction set forth in the patent owner’s preliminary response. Judge Saindon concurred, proposing a new dispositive General Plastic factor establishing a “rebuttable presumption” that, if the patent owner has already filed a preliminary response, a later-filed petition will be denied if it is filed by a party that is a “similarly situated defendant[] or otherwise realized a similar-in-time hazard” as the first petitioner. Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp., No. IPR2018-00761, Paper 15 (Sept. 5, 2018) (Wieker, joined by McMillin and Saindon).


PTAB: A likelihood of prevailing on one claim is enough. The Board denied the patent owner’s request for rehearing, explaining that institution based on only one proposed ground for one claim did not constitute an abuse of discretion. As the Supreme Court stated in SAS, “Section 314(a) does not require the Director to evaluate every claim individually…it simply requires him to decide whether the petitioner is likely to succeed on at least 1 claim.” The Board further noted that its analysis of the claim provided the parties with sufficient guidance regarding the remaining challenged claims. Alcatel-Lucent USA Inc. v. Oyster Optics, LLC, IPR2018-00070, Paper 27 (Aug. 31, 2018).


PTAB: Post-SAS remand expanded to include all grounds, not just all claims. The Federal Circuit affirmed the Board’s determination that claims 7-13 were not shown to be unpatentable, and remanded for consideration non-instituted claims 1-6. On remand, the Board instituted trial on all non-instituted grounds, including those challenging claims 7-13. The Board denied the patent owner’s request for rehearing, explaining that the petitioner had not waived its additional challenges and that the potential for a subsequent remand on the non-instituted grounds for claims 7-13 weighed strongly in favor of their institution. Broad Ocean Techs., LLC, v. Nidec Motor Corp., IPR2015-01617, Paper 48 (Aug. 28, 2018).


USPTO seeking comments on Strategic Plan by September 20. The draft plan sets out the USPTO’s mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and to provide domestic and global leadership to improve intellectual property (IP) policy, enforcement, and protection worldwide. The USPTO welcomes comments on all aspects of the plan, which should be emailed to Strategicplanning1@uspto.gov before September 20, 2018.


Trial Practice Guide Update. The Board published an update to the AIA Trial Practice Guide including guidance on providing for sur-replies as a matter of right, the use of expert testimony, procedures for oral hearing before the Board, distinctions between motions to exclude and motions to strike, considerations of various non-exclusive factors in determination of whether to institute trial, and providing pre-hearing conference.


*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.), Timothy Caine, Benjamin Evans, Janna Fischer, Christopher Geyer, Jason Heidemann, Arvind Jairam, Wing Liang, Sandip Patel, Krupa Parikh, Rebecca Rabenstein, Rangan Ramasamy, David Roadcap, Stevan Stark, Todd Siegel, and Amy Simpson. 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.