Alert January 17, 2017

Issue One: Keeping Tabs on the PTAB

Summary

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.

This is Goodwin’s first edition of “Keeping Tabs on the PTAB,” which will be sent monthly.

PTAB

Telebrands Corp. v. Tinnus Enterp. LLC

In Telebrands Corp. v. Tinnus Enterp. LLC, PGR2015-00018, (Paper 75, Dec. 30, 2016), the Board found that the patent at issue was invalid based on the indefiniteness of the term “substantially filled,” in the context of the amount of fluid in a container. The Board applied the indefiniteness standard that had been approved by the Federal Circuit for examination at the U.S. Patent and Trademark Office in In re Packard, 751 F.3d 1307 (2014): “a claim is indefinite if it contains words or phrases whose meaning is unclear.” The Board decided not to apply the indefiniteness standard announced by the Supreme Court in Nautilus Inc. v. Biosig Instr., Inc., 134S.Ct. 2120 (2014), that a patent’s claims are not indefinite if the claims, when “viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”

The Board analogized to the Broadest Reasonable Interpretation claim construction standard, approved by the Supreme Court in Cuozzo, that is used during post-grant review. According to the Board, the Broadest Reasonable Interpretation standard, broader than the claim construction standard applied by a district court in patent litigation, is appropriate during post-grant review because of the opportunity to amend claims. It similarly stated that the Packard standard, which “sets a threshold for indefiniteness that demands at least as much clarity, and potentially more clarity, than the Nautilus definiteness requirement,” is appropriate for post-grant review, where the Patent Owner has the opportunity to amend the claims. (Page 17.)

Takeaway

This is one of the first PGR cases to reach a Final Written Decision. Because indefiniteness is not an available challenge during IPR, it is also an early look at the Board’s views on indefiniteness in PGRs.

Global Tel*Link Corp. v. Securus Techs., Inc

In Global Tel*Link Corp. v. Securus Techs., Inc., IPR2015-01225, the Board allowed a motion to amend the claims. (Paper 45, Dec. 14, 2016.)

For the substitute claims that were found patentable, the Board noted the following over Petitioner’s objections: Patent Owner’s proposed claim constructions were adequate in light of the written description, and express claim constructions for all terms were not required; Patent Owner explained patentability over all prior art known to Patent Owner; the substitute claims were not indefinite and had written description support; the substitute claims did not enlarge the scope of the original claims; and the substitute claims were responsive to a ground of unpatentability involved in the IPR.

The Board also rejected a number of proposed substitute claims for various reasons including unpatentability over the prior art of record and lack of written description support. 

Takeaway

This case is one of the few grants of a motion to amend. The Board explains its reasoning for different claims, laying out a roadmap that may be helpful for Patent Owners looking to amend.

Genband US LLC v. Metaswitch Networks, Ltd

In Genband US LLC v. Metaswitch Networks, Ltd., IPR2015-01456, as part of its Final Written Decision, the Board denied Patent Owner’s Motion to Exclude claim construction documents from a co-pending litigation. Patent Owner had argued that these materials were irrelevant, including because of the different claim construction standards that apply in the two fora. The Board disagreed, finding that Patent Owner’s district court arguments regarding the scope of the claim could be relevant, and that the district court’s construction has value by “possibly providing contrast.” (Paper 36, Dec. 15, 2016.)

Takeaway

It is important to have a cohesive strategy in all aspects of parallel litigation and IPR. Despite the different standards, statements made in one forum may be used as evidence in the other.

District Courts

Intellectual Ventures I LLC v. Toshiba Corp.

In Intellectual Ventures I LLC v. Toshiba Corp., No. 13-453-SLR, slip op. (D. Del. Dec. 19, 2016), Judge Robinson addressed the IPR statutory estoppel provision, which states that a petitioner “may not assert in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised” during the IPR. 35 U.S.C. § 315(e)(2). Judge Robinson noted that in Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016), the Federal Circuit construed this provision “quite literally” in finding that because the PTAB rejected a certain invalidity ground proposed by the IPR petitioner, the petitioner “did not raise –nor could it have reasonably raised—the [rejected] ground during the IPR.” Slip op. at 26. Extending the logic of Shaw, Judge Robinson held that although Toshiba could have raised certain obviousness arguments—which were based on public documents—at the outset of its IPR petition, Toshiba was not estopped from raising these arguments in the litigation.

Takeaway

Although only a few district court and Federal Circuit cases have interpreted petitioner estoppel to date, the implications of the estoppel provisions are shaping up to be narrower than many thought.

Hopkins Manufacturing Corp. v. Cequent Performance Prods., Inc. 

In Hopkins Manufacturing Corp. v. Cequent Performance Prods., Inc., No. 14-2208-JAR , slip op. (D. Kan. Dec. 12, 2016), the court granted Defendant/Petitioner’s motions for summary judgment and to lift a stay of litigation pending IPR. Plaintiff/Patent Owner had requested an adverse judgment at the PTAB, which effected a cancellation of the claims at issue in the litigation. At the district court, Defendant/Petitioner then sought summary judgment of no infringement to obtain “prevailing party” status, to enable it to move for attorney’s fees under 35 U.S.C. § 282.

Over Plaintiff/Patent Owner’s arguments that the case was moot and therefore no judgment should be entered, the court granted Defendant/Petitioner’s motion, based on the cancellation of the claims at the PTAB. This had the effect of conferring prevailing party status on Defendant/Petitioner, to enable it to move for attorney’s fees.

The IPR was No. IPR2015-00605.

Takeaway

Even where claims are cancelled in an IPR, consider whether any issues remain live in co-pending district court litigation. 

Federal Circuit

Wi-Fi One LLC v. Broadcom Corp.

The Federal Circuit granted a motion for en banc rehearing in Wi-Fi One LLC v. Broadcom Corp., No. 2015-1944, slip op. (Jan. 4, 2017). In the original Wi-Fi One decision, the court held that it could not review the PTAB’s decision to institute IPR over Patent Owner’s assertions that the petition was time-barred because it was filed after the one-year deadline set out in 35 U.S.C. § 315(b). The court indicated that it was bound by its prior decision in Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), in which the court held that the PTAB’s institution decision, which turned on the one-year time-bar of § 315(b), was not appealable under 35 U.S.C. § 314(d): “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”

In the wake of the Supreme Court’s decision in Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2131 (2016), wherein the Supreme Court indicated that some aspects of the PTAB’s institution decisions may be reviewable, such as where the agency action is contrary to constitutional right, in excess of statutory jurisdiction, or arbitrary and capricious, some Federal Circuit judges have questioned whether Achates remains good law. See, e.g., Judge Reyna’s concurrence in the original Wi-Fi One decision (837 F.3d 1329 (Fed. Cir. Sep. 16, 2016)); Judges O’Malley and Taranto’s concurrences in Click-to-Call Tech. v. Oracle Corp., No. 2015-1242 (Fed. Cir. Nov. 17, 2016).

The question for rehearing in Wi-Fi One is:

Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review? 

Takeaway

If the Federal Circuit does overturn Achates, review of PTAB institution decisions will likely remain limited, e.g. to instances where the one-year time-bar is at issue. The language in Cuozzo may have opened the door for review in limited circumstances, but review of institution decisions in still generally prohibited under 35 U.S.C. § 314(d).

In re Nuvasive, Inc

In re Nuvasive, Inc., No. 2015-1670 is an appeal from a final written decision in which the PTAB found claims unpatentable as obvious over combinations of prior art that included a product brochure and a product guide. The Federal Circuit found that the Patent Owner had waived an argument that these references were not publicly available—and therefore not “printed publications” for prior art purposes—because it asserted the argument only in its preliminary response, and did not re-assert it after institution. Despite the Patent Owner’s loss on this issue, it ultimately prevailed in the appeal. The Court vacated the final written decision and remanded for additional PTAB findings and explanations regarding a motivation to combine the prior art references. (Decision dated Dec. 7, 2016.)

Takeaway

Keep in mind that arguments raised only during the pre-institution phase of a post-grant review proceeding are waived if not re-raised after institution, and thus will not be part of the record for purposes of appeal of a final written decision.