The Current Roundup

PTAB Conference – Early Bird Registration Special Ends Soon: The Chicago-Kent Center for Empirical Studies of IP is co-sponsoring a one-day conference October 20th, 2017, at the Chicago-Kent College of Law. The conference, titled “The Power of PTAB: The New Authority in Patent Law,” will examine the rise of the PTAB, and the presentations will include useful insights from empirical studies and data analysis of PTAB-related issues. The conference will also formally announce the PTAB Bar Association’s collaboration with the school on its Journal of IP. Early-bird registration (50% discount) ends today, October, 6th. Further information can be found here.

CAFC: en banc – Aqua Products – Petitioners bear the burden: Divided 7-4 with 5 separate opinions, the majority opinion vacated and remanded with instructions to assess the patentability of the patent owner’s proposed amendments “without placing the burden of persuasion on the patent owner.” The majority stated:

[V]ery little said over the course of the many pages that form the five opinions in this case has precedential weight. The only legal conclusions that support and define the judgment of the court are: (1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and (2) in the absence of anything that might be entitled deference, the PTO may not place that burden on the patentee.

Aqua Prods., Inc. v. Matal, No. 2015-1177 (Oct. 4, 2017) (en banc, Stoll not participating).

CAFC: Unreasonably broad despite no lexicography: The Board affirmed the examiner’s rejections in an ex parte reexamination, but the Federal Circuit reversed. Although the specification did not expressly define or disclaim the definition of the claim term “body,” the Board’s unreasonably broad and generic definition swallowed other separately described components such as mandrel and cam sleeve. “The correct inquiry is not…whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.” In re Smith Int’l, Inc., No. 2016-2303 (Sep. 26, 2017) (Lourie, joined by Reyna and Hughes).

CAFC: Corroborating conception and actual reduction to practice: In an IPR, the Board found that the patent owner failed to demonstrate an actual reduction to practice that “inured” to the named inventor. A prototype (which the Board assumed embodied the invention) was reduced to practice before the effective date of the prior art, but by a contractor that was hired by the inventor. The Board criticized the lack of a complete paper trail even though twenty years had since passed. The Federal Circuit vacated the Board’s finding as unsupported by substantial evidence. The Board’s findings were “either inconsistent with the documents themselves or do not adequately consider the portions of the documents that support corroboration,” and “considering the amount of time that has passed,” the Court held that the inventor’s account that he provided the specifications to the contractor was sufficiently corroborated by the evidence. “[T]he Board’s analysis raises the question of who, if not [the inventor], designed the prototype.” The Court remanded for a determination whether the prototype embodied the claimed invention. NFC Tech., LLC v. Matal, No. 2016-1808 (Sep. 20, 2017) (Lourie, joined by Newman and Hughes).

CAFC: Board’s explanation does not require perfect clarity: The Federal Circuit affirmed a finding of a motivation to combine in an IPR because the Court could “reasonably discern that [the Board] followed a proper path.” The Board first stated the petitioner’s motivation to combine arguments, found that the ordinary artisan “would have immediately recognized that a simple substitution” was needed to combine the references, and then considered and rejected each of the patent owner’s counter-arguments. From this, the Court could “reasonably discern” the Board’s reasoning on this point. Cablz, Inc. v. Chums, Inc., No. 2016-1823 (Sep. 12, 2017) (nonprecedential) (Reyna, joined by Schall and Hughes).

District Court: Another IPR estoppel case: After analyzing the district-court split regarding the scope of the Shaw case, the magistrate recommended granting the plaintiff’s summary judgment motion to estop the defendant from raising grounds that were not in the petition. The defendant was aware of the references in those two grounds before filing its petition, as it included all the references in its Invalidity Contentions that were served prior to filing the petition. Network-1 Techs., Inc. v. Alcatel-Lucent USA, Inc., Case 6:11-cv-00492, ECF No. 978 (E.D. Tex. Sept. 26, 2017) (Mitchell).

For more cases addressing the Shaw exception to the IPR estoppel, see the September 22, 2017, PTAB Roundup.

District Court: Stay denied pending Federal Circuit appeal of IPR: The defendant requested a stay pending an appeal to the Federal Circuit after the PTAB upheld the validity of all challenged claims in one of four patents-at-suit, contending the CAFC could reverse and simplify the case. Although the plaintiff dropped the claims undergoing IPR in two of other patents-at-suit, a number of still-asserted claims were undergoing PTAB review. The court analyzed the three stay factors and “easily” concluded that the case should not be stayed. Triplay, Inc. v. WhatsApp Inc., Case 1:13-cv-01703, ECF No. 139 (D. Del. Sept. 18, 2017) (Burke).

PTAB – expanded panel: Disclaiming claims to avoid CBM: To qualify for CBM review, a patent must claim a covered business method. In this case, the patent owner disclaimed the dependent claims that the petitioner alleged brought the patent within the purview of CBM review. Because a patent is treated as if the disclaimed claims never existed, the original panel denied institution. The expanded panel denied the petitioner’s request for rehearing, upholding the original panel’s decision to deny institution. When the Board decided whether to institute, the patent did not claim a covered business method as required by the statute. Facebook, Inc. v. Skky, LLC, CBM2016-00091, Paper 12 (Sept. 28, 2017) (Perry, joined by Ruschke, Boalick, Arbes, and Cherry).

PTAB: Leave to file a motion to terminate in light of General Plastic: In view of the PTAB’s recent designation of General Plastic decision as informative, the patent owner sought permission to file a motion to terminate or, in the alternative, a waiver of the expired deadline for a request for rehearing. The Board granted leave to file a seven-page motion to terminate. Securus Techs., Inc. v. Global Tel*Link Corp., CBM2017-00034, Paper 13 (Sept. 26, 2017) (Turner, joined by Benoit).

The PTAB Roundup reported on the General Plastic decision in its September 22, 2017, edition.

*Contributors: Jonathan Strang (ed.), Thomas Donovan, Kevin McNish, Fahd Patel, Steven Peters, Todd Siegel, Kenneth Weatherwax, Orion ArmonBen Evans, Christopher GeyerJohn Holley, Arvind Jairam, Thomas King, Thomas Pasternak, Rebecca Rabenstein, Diva Ranade, Surenda (Kumar) Ravula, David Roadcap, and Abhay Watwe. 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.