March 6, 2020

Issue Twenty-Four: 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.

Dynamics of Filing Multiple Petitions

Even after the PTO issued the Trial Practice Guide July 2019 Update, which provided guidance on filing multiple petitions directed to the same patent, different panels have handled multiple or serial petitions differently. A number of recently-issued decisions are instructive on how panels may address the issue of multiple petitions filed challenging a single patent.

In Comcast Cable Comms., LLC v. Rovi Guides, Inc., IPR2019-01376, Paper 9 (PTAB Feb. 10, 2020) and Comcast Cable Comms., LLC v. Rovi Guides, Inc., IPR2019-01377, Paper 9 (PTAB Feb. 11, 2020), the Board denied institution under 35 U.S.C. § 314(a) and in view of Petitioner’s Notice of Ranking Petitions (IPR2019-01375). The Petitioner filed three petitions all challenging the same patent, and argued that each should be instituted. The Board instituted trial on what it determined to be the strongest of the three petitions on the merits and denied institution in the remaining two petitions. In rejecting Petitioner’s arguments that there were material differences between the petitions, the Board noted that the petitions relied on the same primary reference and key secondary reference.

In Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01470, Paper 7 (PTAB Feb. 11, 2020), the Board similarly denied institution under § 314(a) of one of two petitions filed on the same day, challenging claims of the same patent. The Board rejected Petitioner’s argument that both petitions should be instituted because there was no overlap of the claims being challenged, explaining that accepting “[s]uch reasoning would justify as many petitions as there are claims in a patent, which is untenable.”

In Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-01248, Paper 34 (PTAB Feb. 6, 2020), the Board held that the Petitioner could not remain a party to the current proceeding under 35 U.S.C. § 315(e)(1), but refused to terminate the proceeding and issued a final written decision under 35 U.S.C. § 317(a).; The petition at issue was filed on the same day as two other petitions challenging the same claims. The Board instituted all three proceedings, but due to a delay in issuance of the Notice Of Filing Date, the present proceeding lagged behind the others. After the Board issued a final written decision in one of the other proceedings, Patent Owner moved to terminate this proceeding based on 35 U.S.C. § 315(e)(1). The Board rejected Petitioner’s argument that § 315(e)(1) should not apply to simultaneously filed proceedings and faulted Petitioner for not seeking consolidation or asking the Board to synchronize the schedules of the three proceedings.

In Intel Corporation v. VLSI Technology LLC, IPR2019-01198, Paper 19 (PTAB Feb. 6, 2020), the Board granted institution, rejecting Patent Owner’s arguments that the petition should be denied under 35 U.S.C. § 314(a). Petitioner filed three petitions challenging different claims of the same patent. In its institution decision, the Board noted that any undue burden on the parties or the Board may be avoided or reduced by consolidating the instituted inter partes reviews.

In Samsung Elecs. Co., Ltd. v. NuCurrent, Inc., IPR2019-00860, Paper 15 (PTAB Feb. 7, 2020), the Board granted Petitioner’s Request for Rehearing of the decision to deny institution of inter partes review and, on rehearing, granted institution. The Board noted that it instituted two other proceedings in which it would be analyzing the same primary reference, the same specification, and many of the same secondary references, and the proceeding at issue could be consolidated with the two other proceedings to minimize the burden on the Board and patent owner.

TAKEAWAY: Petitioners who file multiple petitions challenging the same or related patents may increase the likelihood that each will be instituted by seeking consolidated proceedings and synchronization of schedules to minimize the burden on the Board and patent owner. This is particularly true where there is substantial overlap between the petitions, either in prior art references or in arguments raised.

Indefiniteness at the PTAB

Two recent decisions involving indefiniteness arguments at the PTAB provide useful tips for practitioners.

In Samsung Electronics America, Inc. v. Prisua Engineering Corp., 948 F.3d 1342 (Fed. Cir. Feb. 4. 2020), the Federal Circuit rejected an argument that the Board should have cancelled claims as indefinite. Samsung challenged several claims of Prisua’s patent in an IPR. In its final written decision, the Board found some of the challenged claims to be indefinite and indicated that it could not compare the indefinite claims to the prior art. As a result, the Board held that Samsung had failed to prove the indefinite claims were unpatentable under Sections 102 and 103.

On appeal, Samsung argued that the Board should have cancelled the claims that the Board determined were indefinite. The Federal Circuit rejected this argument, confirming that the Board may not cancel claims for indefiniteness in an IPR proceeding. Id. at 1350-51. The Federal Circuit noted that if the Board cannot ascertain the scope of a claim with reasonable certainty it should decline to institute the proceeding or conclude that it could not reach a decision on the merits of certain claims under sections 102 or 103. Id. at 1353.

In Rideapp, Inc. v. Lyft, C.A. No. 18-cv-07152, D.I. 127 (N.D. Cal. Feb. 24, 2020), the district court denied Lyft’s motion for attorney’s fees, which argued that RideApp should have re-evaluated its position and ended the litigation after the Board opined that the asserted claims were indefinite. Although the Court ultimately agreed with the Board’s reasoning on indefiniteness, it determined that the decision to continue the litigation following the Board’s non-dispositive ruling was not exceptional for purposes of a fee award. The court noted that the Board has no jurisdiction to invalidate claims based on indefiniteness in an IPR and the Board’s reasoning was not binding on the court.

TAKEAWAY: Petitioners should be wary of raising, even indirectly, questions of indefiniteness in IPR proceedings. An IPR is not the proper venue to resolve indefiniteness arguments, and such arguments can unnecessarily complicate the Board’s analysis of an IPR petition.

PTAB Declines to Consider Equitable Estoppel Issues Previously Litigated in District Court

In Samsung Elecs. Co. Ltd. v. NuCurrent, Inc., IPR2019-00860, Paper 15 (Feb. 7, 2020), the Board rejected Patent Owner’s argument that the IPR should not be instituted due to issue preclusion and judicial estoppel. Patent Owner (NuCurrent) previously sued Petitioner (Samsung) in a Texas federal district court, and Petitioner moved to transfer the case to New York based on the forum selection clause in the parties’ then-expired Non-Disclosure Agreement (NDA). After transfer was granted, Petitioner filed its petition for inter partes review. Patent Owner asked the New York district court to block the IPRs, citing the same forum selection clause. The New York district court declined to preclude the IPRs because the forum selection clause had expired.

In its preliminary response to the IPR petition, Patent Owner argued judicial estoppel and issue preclusion should require the forum selection clause to apply, and therefore preclude institution, because Petitioner relied on, and asked the court to enforce, the clause in federal court when it moved to transfer the case from Texas to New York. Patent Owner argued that these issues are jurisdictional questions and not affirmative defenses, and that although the Board has previously declined to evaluate these issues, it is obligated to resolve jurisdictional defenses as is the case for an Article III court. Patent Owner also argued that the Federal Circuit was bound by Dodocase VR, Inc. v. MerchSource, LLC, No. 2018-1274, 2019 WL 1758481( (Fed. Cir. Apr. 18, 2019), which held that the parties could not pursue validity challenges before the Board based on a forum selection clause in a patent license. The Board noted that it has consistently held that equitable estoppel defenses are not a basis to deny institution, and that even if equitable estoppel doctrines were defenses in an IPR proceeding, the New York district court had determined that the claims in the instant IPR petitions are not subject to a forum selection clause.

TAKEAWAY: A Patent Owner is more likely to be successful in terminating an IPR based on a forum selection clause in a federal district court by obtaining an injunction than in the PTAB. Instead, the Board has indicated that equitable estoppel doctrines are not a basis for denying institution, and that it views Dodocase as limited to its facts. Further, while decisions of the district court may not be binding on the Board, the Board is unlikely to rehear issues relating to equitable estoppel based on forum selection clauses in contracts that a district court has already decided.

PTAB Denial of Institution Insufficient to Support Motion to Dismiss

In Finjan, Inc. v. Cisco Systems, Inc., 5-17-cv-00072 (N.D. Cal. Feb. 3, 2020), a district court denied the Patent Owner plaintiff’s motion for summary judgment that its patents were not invalid after the PTAB declined to institute the IPR challenging the asserted patent. Patent Owner argued that because Defendant’s “strongest” prior art did not meet the PTAB’s low bar of a reasonable likelihood that at least one claim is unpatentable, a reasonable jury could not find that Defendant’s “second-string” prior art asserted in the litigation invalidates the patents under the clear and convincing standard applicable in district court litigation. Id. at 4. The court rejected this assertion, finding that Plaintiff effectively asked the court to expand IPR estoppel beyond what the statute provides. The court noted that Plaintiff asked the court to presume that the best and strongest prior art was used in the IPR, but this outcome is “nothing short of creating an IPR estoppel where the petition did not result in a final written decision – contrary to the statute’s clear language.” Id.

TAKEAWAY: Parties continue to test the boundaries of the post grant review statutes and the scope of estoppel with reference to prior art raised in an IPR petition. Despite a lower evidentiary standard for IPR institution than required to invalidate a patent in district court, courts seem unlikely to accept assumptions regarding the relative the strength of prior art.

Arthrex Issues Linger

Motion practice based on the Arthrex decision continues in PTAB proceedings, district court litigation, and at the Federal Circuit.

In Eli Lilly and Company v. Teva Pharmaceuticals International GmbH, IPR2018-01422, -01423, -01424, -01425, -01426, -01427, -01710, -01711, and -01712, Paper 79 (February 18, 2020), Patent Owner sought to invoke the supervisory authority of the Director to stay proceedings in a number of IPRs until the court issues the mandate in Arthrex. The Board denied the request as both procedurally improper and without merit.

In Image Processing Technologies, LLC v. Samsung Electronics Co., Ltd., et al., No. 2018-2156 (February 24, 2020), the Federal Circuit denied petitions for panel rehearing and rehearing en banc of its decision vacating the PTAB’s rulings invalidating claims of the challenged patent based on Arthrex. In related district court litigation, 2:16-cv-00505-JRG (Order February 24, 2020), the court lifted the stay that was based on pending IPRs, noting that “it is possible that the final outcome of the Arthrex case will be long in coming, given its significance and the multiple requests for rehearing en banc.”