Alert February 22, 2018

Issue Eleven: PTAB Trial Tracker

PTAB Grants-in-Part Motion to Amend Claims, Even Though Federal Circuit Previously Invalidated the Claims

In Semiconductor Components Industries, LLC v. Power Integrations, Inc., IPR2016-01600, Paper 35 (PTAB Feb. 14, 2018), the Board partly granted Patent Owner’s Motion to Amend, allowing Patent Owner to cancel four claims of the challenged patent, but denied entry of the proposed substitute claims for lack of written description.  In a separate appeal stemming from a district court case, the Federal Circuit had previously invalidated two of the original claims that were the subject of the motion to amend.  Patent Owner did not seek Supreme Court review of the Federal Circuit’s decision invalidating the claims.  

Petitioner argued that the Board should deny the motion to amend as moot, because the claims have been “effectively cancelled” by the Federal Circuit’s ruling, and because they “no longer exist,” they “are not capable of being substituted.”  (Page 9.)  Although acknowledging that the Federal Circuit’s final judgment of invalidity is binding on the Board, the Board nevertheless found that the controlling case law “says nothing about the effect of a court’s invalidity judgment on whether the Board may cancel claims in an inter partes review.”  (Page 10.)  The Board accordingly granted Patent Owner’s Motion to Amend with respect to the request to cancel the original patent claims.  The Board then went on to deny entry of the proposed substitute claims, finding that they lacked written description support. 

Takeaway:  This case presents an anomalous situation where the patent owner was permitted to propose substitute claims for claims that had previously been invalidated by the Federal Circuit.  Although the Board ultimately denied the substitute claims for failure to meet the written description requirement, query the outcome had the substitute claims met the requirement.  Patent owners who have parallel court and PTAB proceedings should keep this case in mind—for now, it opens the door to substitution of claims even after those claims have been invalidated at the Federal Circuit. 

Time-Bar Determinations in Institution Decisions are Appealable

In Wi-fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 8, 2018), the en banc Federal Circuit held that despite the statutory prohibition on appellate review of institution decisions, the PTAB’s determination as to whether a time bar precludes institution is appealable.  (The time bar, which is embodied in 35 U.S.C. § 315(b), holds that IPR may not be instituted if the petitioner, real party in interest, or privy of the petitioner files the petition more than one year after it was served with a complaint alleging infringement of the patent.)  The Federal Circuit acknowledged that while judicial review of institution decisions is generally prohibited under 35 U.S.C. § 314(d), this prohibition does not apply to any time bar-based determinations.  The Federal Circuit relied in part on the Supreme Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), in which the Supreme Court held that an institution decision that is not closely related to either the preliminary patentability determination or the exercise of discretion not to institute may be reviewable.

Takeaway:  It remains to be seen how this holding will be applied procedurally, such as whether appeals will be taken immediately following the institution decision or after the final written decision.  With this open window into appellate review, parties should carefully consider whether to attempt an appeal at the institution stage.  

Patent Owner Estoppel Affects Pending Prosecution Following Patent Owner’s Disclaimer to Avoid IPR 

In Arthrex, Inc. v. Smith & Nephew, Inc., No. 2017-1239 (Fed. Cir. Jan. 24, 2018), the Federal Circuit affirmed the Board’s issuance of an adverse judgment against the Patent Owner even though the Patent Owner had disclaimed the challenged claims prior to the Board’s decision whether to institute IPR.  The Board issued the adverse judgment notwithstanding Patent Owner’s express statement in its preliminary response that it was “not requesting an adverse judgment.”  Because of the adverse judgment, Patent Owner is now subject to patent owner estoppel, which precludes a patent owner “from taking action inconsistent with the adverse judgment, including obtaining in any patent…a claim that is not patentably distinct from a finally refused or canceled claim.”  37 C.F.R. § 42.73(d)(3).  

The Court stated that it “reserved” for another day the issue of whether the Patent and Trademark Office (“PTO”) had the authority to adopt the patent owner estoppel provision embodied in 37 C.F.R. § 42.73(d)).  

Judge Newman dissented, asserting that 37 C.F.R. § 42.73(d) provides that an adverse judgment should only be entered following a disclaimer that is made after institution of an IPR.

Takeaway:  Disclaiming challenged claims is a tool that patent owners have used to avoid having the Board find claims unpatentable.  As this case illustrates, this strategy is not without risk; disclaimer even prior to institution may have far-reaching effects in other proceedings on related patents, including preventing patent owners from obtaining claims in continuation applications.  Patent owners are well-advised to consider the possible scope of any estoppel that may result from disclaiming challenged claims.

Board Applies Broader Scope of Petitioner Estoppel Than District Courts

In Koninklijek Philips N.V. v. Wangs Alliance Corp., pending in the District Court for the District of Massachusetts, plaintiff Philips moved for summary judgment of no invalidity based on all 102 and 103 grounds that relied upon patents and printed publications.  Philips argued that the defendant was (1) estopped from raising any grounds which it raised or reasonably could have raised in a related IPR that had reached a final written decision; and (2) precluded from raising other grounds of invalidity because defendant did not include them in its invalidity contentions.  The court denied summary judgment, holding that (1) under the Federal Circuit’s decision in Shaw, petitioner estoppel applied only to instituted grounds; and (2) the court will rule on the grounds not included in the contentions after it is presented with the reason for the lateness of the grounds.  (No. 14-12298-DJC, D. Mass., Jan. 2, 2018.)  

In two recent cases the Board granted the patent owners’ motions to terminate shortly before the scheduled oral hearing, finding in each case that the petitioner was estopped from maintaining the challenge because a final written decision on the same patent had issued in the petitioners’ previous IPRs.  Valve Corp. v. Ironburg Inventions LTD, IPR2017-00136, Paper 43 (PTAB Jan. 25, 2018); Apple, Inc. v. Papst Licensing GMBH & Co., KG, IPR2016-01860, Paper 28 (PTAB Jan. 10, 2018).  In both cases, the Board based its estoppel decision on the patent owner’s showing that the petitioner was aware of, or reasonably should have been aware of, the prior art raised in the second IPR at time it filed its first IPR petition.  In contrast to the district court case noted above, the Board did not conduct an analysis under the Federal Circuit’s decision in Shaw.

Takeaway:  While district courts continue to grapple with the scope of petitioner estoppel in view of the Federal Circuit’s Shaw decision, the estoppel analysis at the Board is typically more straightforward, with the Board focusing on whether the petitioner “raised or reasonably could have raised” a ground during the first IPR.(35 U.S.C. § 315(e)(1).)Therefore, the Board’s estoppel decisions, which typically do not analyze whether grounds were included in a petition but not instituted, are more predictable than district court decisions.As we’ve seen, different district courts have interpreted Shaw in different ways, resulting in broad petitioner estoppel in some courts, and narrow petitioner estoppel in others.

Decisions Offer Mixed Guidance on When the Board Will Deny Petitions Based on “Art and Arguments Previously Presented to the Office”  

Under 35 U.S.C. § 325(d), the Board has discretion to deny a petition where “the same or substantially the same prior art or arguments previously were presented to the Office.”  In late 2017, the Board designated three cases on this topic as “informative.”  (See The PTAB Trial Tracker, Issue 9.)  Notwithstanding these designations, there is little uniformity in the Board’s decisions, which continue to be very fact-based.  Here is a sample of recent cases that discuss the Board’s discretion to deny institution based on an analysis of whether the same art or arguments were previously presented to the PTO:
  • In TCL Corp. v. Lexington Luminance LLC, IPR2017-01780 (PTAB Jan. 2, 2018), the Board denied institution of an IPR because the Board had previously considered and rejected the same prior art in two petitions filed by different petitioners.
  • In BMW of North America, LLC v. Intellectual Ventures II LLC, IPR2017-01836 (PTAB Jan. 29, 2018), the Board instituted IPR over Patent Owner’s arguments that an anticipation ground should be denied because it is nearly identical to an anticipation ground the Board is already considering in an IPR filed by a different petitioner.  The Board observed that the petitioner here is different than the petitioner in the prior IPR, and found that one petitioner is not required to discuss the differences and relative merits with respect to another petitioner’s grounds, particularly where, as here,  the second petition was filed before any substantive response from Patent Owner in the first IPR.
  • In Live Nation Entertainment, Inc. v. Complete Entertainment Resources B.V.,  PGR2018-00038 (PTAB Jan. 16, 2018), the Board denied institution because the PTO had considered the same art and arguments during prosecution of a continuation application that had claims similar to those at issue in the PGR.  The art and arguments had been submitted to the PTO pursuant to a third party submission filed in the prosecution of the continuation application.
  • In Westinghouse Air Brake Techs. Corp. v. Siemens Industry, Inc., IPR2017-01669 (PTAB Jan. 31, 2018), the Board instituted IPR over Patent Owner’s arguments that the petition should be denied because the Examiner had considered the same art or arguments during prosecution.  The Board explained that the Patent Owner had not shown that the Examiner had considered the art “in its entirety” or the arguments “substantively.”  (Page 34.)
  • In Eset, LLC v. Finjan, Inc., IPR2017-01738 (PTAB Jan. 31, 2018), the Board instituted IPR, but exercised its discretion not to institute a ground that had been considered “extensively” during prosecution, “including [in] no fewer than five Office Actions.”  (Page 25.)  The Board found that it would not be “productive to reconsider patentability of the claims” over the reference, even in combination with the new reference proffered by Petitioner.  (Page 25.)  The Board also agreed with Patent Owner that Petitioner had “oversimplified” the prosecution history in the petition, but declined Patent Owner’s invitation to sanction Petitioner for purportedly “advancing a frivolous ground, misrepresenting facts, harassing Patent Owner, and causing an unnecessary increase in the cost of the proceeding.”  (Page 25.)

Takeaway:  While the Board continues to refine its position on when it will deny a petition based on art and arguments that were previously considered by the PTO, petitioners should seek to differentiate the art and arguments presented in the petition from those previously considered by the PTO in any capacity – either during prosecution of the challenged patent or a related patent, during a reexamination, or in connection with a previously-filed IPR, PGR, or CBM petition.  Patent owners are well-advised to mine all prior PTO proceedings on the patent and any related patents and patent applications to evaluate whether the same art or arguments were previously presented to the PTO.