March 12, 2019

Issue Thirteen: PTAB Trial Tracker

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB, district court, and Federal Circuit decisions relating to emerging post-grant issues.

Judicial Economy at the PTAB: Board’s Discretion to Institute Despite Concurrent Proceedings

In Apple Inc. v. Qualcomm Inc., IPR2018-01279, Paper 11 (Feb. 1, 2019), the Board confirmed that “there is nothing per se improper with filing multiple petitions at the same time to avoid issues associated with the word limit,” citing the Board’s prior guidance that “Petitioners should consider filing multiple petitions if exceeding word or page limits were of concern.” (Id. at 8.) The Board noted that if petitions are filed on or about the same day, the policy concerns raised when multiple petitions are filed on the same patent claims are not implicated.

In Samsung Electronics Co., Ltd. v. Iron Oak Techs., LLC, IPR2018-01554, Paper 9 (Feb. 13, 2019), the Board rejected Patent Owner’s argument that the Board should deny institution because the challenged patent was the subject of a prior IPR as well as multiple litigation proceedings. While the Patent Owner did not articulate a basis, the Board interpreted the argument as a request for discretionary denial under § 314(a). The Board rejected Patent Owner’s arguments, noting that (1) the prior IPR involved different prior art and (2) the multiple patent litigation proceedings had all been initiated by Patent Owner. The Board explained “that the patent is involved in multiple pending judicial proceedings does not, by itself, have a tangible impact on Board resources,” and “decline[d] to wield [Patent Owner’s] own litigation activities as a shield” in the IPR proceeding. (Id. at 30-31.)

Takeaway: The Board does not always exercise its discretion to deny petitions pursuant to § 314(a). Petitioners have leeway to simultaneously file multiple petitions before the PTAB asserting different grounds for invalidity on the same patent claims or challenging a patent subject to previous litigation in district court. Patent Owners asking the Board to exercise its discretion to deny a Petition should clearly articulate why denial would preserve the Board’s resources.

The Metes and Bounds of 35 U.S.C. § 315

In Cisco v. Chrimar, the Board extended the Federal Circuit’s rationale in Click-To-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018), and denied institution of the IPR. IPR2018-01514, Paper 10 (Feb. 4, 2019). Recall that in Click-to-Call, the Federal Circuit held that service of a complaint triggers the time bar under 35 U.S.C. § 315(b), regardless of a subsequent voluntary dismissal of the complaint. In Cisco v. Chrimar, the Board extended that rationale to § 315(a)(1), holding that filing a civil action precludes inter partes review, regardless of a subsequent voluntary dismissal. The Board rejected Petitioner’s argument that the voluntarily dismissal of the complaint “nullifie[d] the act of filing,” noting that there is no ambiguity in the statute to allow such an exception. IPR2018-01514, Paper 10 at 8.

In Parrot v. OFO Labs, the Board rejected Parrot’s argument that “the standing limits imposed by § 315(a)(1) apply to any claim in the entire patent family that is not materially different, not just particular claims in a particular patent.” IPR2018-01690, Paper 7 at 10 (Feb. 22, 2019). Patent Owner admitted that the present Petition was the first challenge to the validity of the challenged patent, but based its arguments on other IPR Petitions challenging patents in the same family and which governed the expiration of the challenged patent via terminal disclaimer. The Board held that the “§ 315(a)(1)’s bar to institution of inter partes review applies to ‘the patent’ and does not extend expressly the bar to review to any related patents or patents with claims that are not patentably distinct.” IPR2018-01690, Paper 7 at 11.

Takeaway: Parties need to be aware of the impact that filings in district court will have on the availability of inter partes reviews. The bar under § 315(a)(1) will only apply to challenges to the validity of the patent at issue, and voluntary dismissal will not serve as a “get out of jail free card.” The Board has made it clear that it will not modify or create exceptions to the statutory bars where none exists.

Petitioners Joined as Parties to a Petition Have Standing to Appeal

In Mylan Pharms. Inc. v. Research Corp. Techs. Inc., No. 17-2088 (Fed. Cir. Feb. 1, 2019), the Federal Circuit held that petitioners who are joined as parties to an IPR have standing as parties to appeal. The appellants filed their petitions for IPR more than one year after being sued for infringement, but accompanied the petitions with motions to join an instituted IPR. The Board granted their joinder motions, and ultimately found the challenged claims not invalid. The joined petitioners appealed the Board’s decision, but the original petitioner did not.

Patent Owner argued the joined parties lacked standing to appeal because, absent joinder, their petitions would have been time-barred. In rejecting this argument, the Federal Circuit found that Patent Owner’s position would require reading the word “party” differently between § 315 and § 319. The Federal Circuit held that the joined petitioners were within the zone of interests of § 319 and were not barred from appellate review.

Takeaway: Even where a party’s petition is permitted only by joinder, and is otherwise time-barred, any party to an IPR will have a right to appeal an adverse decision.

IPR Estoppel Does Not Preclude All § 102 and § 103 Arguments

In Oil-Dri Corp. of America v. Nestle Purina Petcare Co., 1-15-cv-01067 (N.D. Ill., February 22, 2019), the district court held that the defendant was not estopped from relying on a reference that was not raised in its IPR in an obviousness argument that could not have been raised in the IPR. The plaintiff asked the court to exclude an obviousness argument based on a combination of a reference and a product. The court held that while the defendant was barred from raising an anticipation defense based only on the reference that could have been raised in the IPR but wasn’t, estoppel did not apply to the obviousness argument at issue. The defendant could not have raised the obviousness argument in its IPR because the product is not a patent or printed publication that may be considered in an IPR. The court noted that there was no evidence that the product was adequately described in a printed publication, and therefore the defendant was not estopped from raising this argument at the district court.

Takeaway: Creative § 102/103 arguments in litigation may not be estopped if the arguments are based on a type of prior art that could not have been included in a previously filed IPR petition. Estoppel may be limited to arguments based solely on printed publications that could have been raised in the Petition, and may not extend to combinations of those references with prior art that could not have been raised.

Claim Construction Can Make or Break Petitions

In Roland Corp. v. inMusic Brands, Inc., IPR2018-00396, Paper 17 (Feb. 21, 2019), the Board found no error in its prior claim construction and denied Petitioner’s request for rehearing. In its decision to deny institution, the Board relied on a technical dictionary when construing a term in the challenged claims. Petitioner requested rehearing, arguing that the Board improperly relied on a non-contemporaneous definition rather than one from the “time of the invention.” The Board found that Petitioner failed to present any evidence showing a change in the ordinary meaning of the disputed term from the earlier definition on which the Board relied to the time of the invention.

In OrthoPediatrics Corp. et al v. K2M, Inc. et al, IPR2018-01547, Paper 9 (Feb. 22, 2019), the Board denied the Petition for failing to comply with 37 C.F.R. § 42.104(b)(3) because the Petitioner did not set forth how each challenged claim is to be construed. The Petition argued that the challenged claims should be given their broadest reasonable construction, but in district court litigation, the Petitioner argued that the claims should be construed pursuant to § 112 ¶ 6 as means-plus-function claims. The Petition did not affirmatively argue the proper construction, but merely argued why a means-plus-function construction was not proper under the IPR claim construction standard. The Board stated that “[b]ecause of the unique circumstances of this proceeding, where Petitioner advocated for a different claim construction in the related district court litigation, we determine that construction of the claim terms in dispute is necessary for the resolution of issues before us. Lacking such claim construction, the Petition fails to comply with 37 C.F.R. § 42.104(b)(3).”

Takeaway: Petitioners should present clear, affirmative claim construction arguments for all terms that are reasonably at issue. If a Patent Owner raises new claim construction issues in its preliminary response, Petitioner must seek an opportunity to rebut Patent Owner’s proposed constructions or risk denial of the petition under § 42.104(b)(3). Further, the Board will not be persuaded by claim construction arguments that present a distinction without a difference. Any arguments that the publication date of a reference make it more or less relevant to claim construction need to be accompanied by evidence showing a change in the technology in the relevant time period.