The Current Roundup

CAFC: Non-prior art evidence filed with reply supported the motivation to combine. The Federal Circuit affirmed the Board’s unpatentability decision. On appeal, the patent owner argued that it did not have notice and an opportunity to respond in the IPR to evidence submitted with the petitioner’s reply. The Court disagreed, explaining that the petitioner properly used reply evidence to rebut arguments made in the patent owner’s response. Further, the patent owner did not seek leave to file a surreply or address the evidence during oral argument. The patent owner also argued that the evidence was not prior art and therefore could not be used to demonstrate a motivation to combine. The Court rejected that argument, too, explaining that the evidence was not used as prior art, but as evidence explaining the ordinary artisan’s motivations before purported date of invention. Yeda Research & Dev. Co. v. Mylan Pharma., Inc., Nos. 2017-1594, 2017-1595, 2017-1596 (Reyna, joined by Bryson and Stoll).


District Court: Case stayed, but must serve infringement and invalidity contentions.The defendant filed an IPR petition and moved to stay the district court case before the Board issued an institution decision. The Court granted the stay in light of the early stage of the litigation and the fact that the parties were not competitors. On the plaintiff’s request, however, the Court ordered the parties to exchange infringement and invalidity contentions. The Court reasoned that the invalidity contentions would reduce litigation regarding which references might be estopped after a final written decision. Neuro & Cardiac Tech., LLC v. LivaNova, Inc., No. 4:18-cv-01517, ECF No. 28 (S.D. Tex. Oct. 9, 2018) (Rosenthal).


District Court: Getting interrogatory responses into the PTAB. Seeking to submit the plaintiff’s interrogatory responses in an IPR, the defendant moved to modify the Court’s protective order. The Court granted the motion, rejecting plaintiff’s arguments of a heightened risk of public disclosure because the potential harm from public disclosure of the interrogatory response would be “minimal.” The Court also rejected plaintiff’s request that the defendant should “first obtain express assurance from the PTAB that the interrogatory response will be filed under seal and will not be publicly disclosed.”  Finjan, Inc. v. Juniper Networks, Inc., No. 3:17-cv-05659, ECF No. 207 (N.D. Cal. Oct. 9, 2018) (Alsup).


ITC: IPR estoppel does not apply to ITC investigative staff. After the Board issued a final written decision on the respondent’s IPR petition, the complainant argued that the respondent was estopped by 35 U.S.C. §315(b) from raising certain prior art before the ITC. The ITC held that even if the respondent was estopped because it raised or reasonably could have raised the art in the IPR, the ITC’s investigative staff was not similarly estopped because it was not a party to the IPR. The ITC then used the prior art at issue to invalidate the claims based on the investigative staff’s arguments. In re Certain Magnetic Tape Cartridges, No. 337-TA-1058 (ITC Oct. 2, 2018) (Cheney).


PTAB: Institution vacated in light of federal court proceedings.  The patent challenged in the IPR was previously found to be invalid under 35 U.S.C. § 101 in the co-pending district court action between the parties. The Board subsequently instituted trial and the patent owner filed a motion to amend the claims. After the Federal Circuit affirmed the district court’s unpatentability judgment, the Board vacated the institution decision, finding that it would be an inefficient use of the Board’s resources to consider the motion to amend because it was filed after the Federal Circuit affirmance and the underlying patent will expire before any appeals of Board’s decision would be exhausted. Facebook, Inc. v. EveryMD.com, LLC, IPR2017-02027, Paper 24 (Oct. 9, 2018).


PTAB: A cautionary tale for petitioners. Denying institution, the Board stated: “The PTAB is not a forum where notice pleading suffices.” The petitioner presented its obviousness grounds via claim charts containing bare citations to the applied references without any explanation of how a person of ordinary skill in the art would have combined the cited features. Also, the unexplained citations to the expert declaration were an impermissible attempt to incorporate by reference. Avant Technology, Inc. v. Anza Technology, Inc., IPR2018-00828, Paper 7 (Oct. 16, 2018).


Newly proposed procedure for motions to amend.  The USPTO published a Request for Comments (RFC) on a new procedure for motions to amend in IPRs, PGRs, and CBMs. The proposal provides an all-new timeline: the patent owner will file a motion to amend at the six-week point, the petitioner has six weeks to respond, and then the Board delivers a preliminary non-binding decision that is followed by more briefing from the parties. For more details, see the PTAB’s announcement. Written comments are due by December 14, 2018.


*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.),Janna Fischer, Christopher Geyer, Sandip Patel, Rebecca Rabenstein, Rangan Ramasamy, Stevan Stark, and  Todd Siegel,  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.