Alert August 27, 2020

Issue Twenty-Nine: PTAB Trial Tracker

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.

PTAB CAN REJECT AMENDMENTS FOR REASONS IT CANNOT USE TO INVALIDATE ORIGINAL PATENT CLAIMS 

In Uniloc 2017 LLC, v. Hulu, LLC, Netflix, Inc., No. 2019-1686, 2020 U.S. App. LEXIS 22835 (Fed. Cir. 2020), a divided Federal Circuit affirmed the Board’s denial of Patent Owner’s motion to amend its claims because Petitioners had shown that the proposed new claims were directed to ineligible subject matter under § 101. Patent Owner argued to the Federal Circuit that the Board lacked authority to find the proposed amended claims ineligible under § 101 because the America Invents Act (“AIA”) restricts IPR proceedings to consideration of anticipation and obviousness. The Federal Circuit stated that, while the AIA only permits petitioners to challenge issued patent claims as obvious or anticipated in a petition for IPR, the text, structure, and legislative history of the AIA confirm that the board may review proposed amended claims for patent eligibility.

TAKEAWAYPatent Owners should be aware that proposed amended claims may be subject to a full review under the patent laws. In light of the strong dissenting opinion, there may be further debate on the scope of the Board’s authority to consider the validity of proposed amendments.

PTAB APPLIES APPLE V. FINTIV ANALYSIS WITH DIFFERING OUTCOMES

The PTAB’s precedential decision in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB March 20, 2020) outlined six factors to analyze in determining whether to apply its discretion under 35 U.S.C. § 314(a) to deny institution in light of a parallel, co-pending litigation, discussed in more detail in Issue 27 and Issue 28. Two recent decisions provide insight into how the Board weighs these factors. 

In, Apple v. Maxell, IPR2020-00204, Paper 11 (PTAB June 19,2020), the Board instituted the inter partes review (IPR), finding that the Apple v. Fintiv factors favored institution. In the parallel district court action, the District Court had already completed a claim construction hearing, and trial was set for October 26, 2020. Id. at 13. In its analysis of factor 4 (overlap between issues raised in the petition and in the parallel proceeding), however, the panel noted that the petition challenged claims that were not at issue in the District Court and Petitioner stated that it would withdraw overlapping arguments from its invalidity contentions at the District Court upon institution. See id. at 16. Thus, the panel determined that factor 4 favored institution. See id. at 17. The panel concluded, “[t]he lack of overlap in the issues and the Petitioner’s relatively strong preliminary showing of unpatentability outweigh [the] factors” that favored “exercising our discretion to deny institution, including the court’s impending trial date and the investment in the underlying litigation (e.g., the court’s completion of claim construction).” Id. at 19-20.  

In a second decision, Apple v. Maxell, IPR2020-00203, Paper 12 (PTAB July 6, 2020), a different panel denied a petition challenging a different patent involved in the same underlying litigation. Unlike in the first petition, however, Petitioner did not offer to withdraw any references used in the IPR petition from its invalidity contentions at the District Court. The panel noted that the same references were being used by the petitioner in both the IPR proceeding and at the District Court and found that factor 4 “on balance favors the exercise of discretionary denial.” Id. at 16. The panel concluded, “[a]ll of the Fintiv factors discussed above either weigh in favor of exercising discretion to deny institution or are neutral.” Id. at 17. Therefore, “efficiency and integrity of the system are best served by denying institution.” Id. at 18. 

TAKEAWAY: The amount of overlap between the arguments raised in the Petition and those in the parallel proceeding is an important part of the Board’s analysis of the Apple v. Fintiv factors. 

ESTOPPEL BASED ON ARGUMENTS THAT PETITIONER REASONABLY COULD HAVE RAISED

Courts continue to define the contours of estoppel after an PTAB proceeding. In Microchip Technology Incorporated v. Delphi Automotive Systems, LLC et al, 1-17-cv-01194 (DDE July 28, 2020), a district court found that the defendant was estopped from raising particular invalidity arguments in light of a previous IPR. Defendant admitted that it knew about the references at issue when it filed the IPR, but argued that it could not have reasonably raised the arguments at issue in the IPR because it could not have anticipated Patent Owner’s infringement arguments. The court disagreed, finding no support for excusing estoppel based on Patent Owner’s allegedly overbroad reading of the claims.

In GREE, Inc. v. Supercell Oy, 2:19-cv-00071 (E.D. Tex. July 9, 2020), Patent Owner argued that Petitioner should be estopped from raising invalidity defenses that could have been raised in a prior, unsuccessful PGR proceeding. The court denied Patent Owner’s motion to strike Petitioner’s arguments because it failed to show that a “diligent, skilled searcher should have found, at the time [the PGR] was filed, any prior art references that [Petitioner] desires to assert as a defense.” The court indicated that Petitioner could argue that the references in question could not have been reasonably raised in the PGR.

TAKEAWAY: As more courts are faced with this question, it appears that some courts are willing to apply the estoppel statutes broadly. Petitioners should carefully weigh the impact of estoppel when developing their PTAB strategy.

BOARD NEED NOT PREVIEW REASONING USED IN FINAL WRITTEN DECISION

In FanDuel, Inc. v. Interactive Games LLC, Case No. 2019-01393 (Fed. Cir. July 29, 2020), the Federal Circuit affirmed the Board’s Final Written Decision in IPR2017-01491 that all but one challenged claim was unpatentable. In its Final Written Decision, the Board held that Petitioner failed to prove the surviving claim was obvious over the prior art. In doing so, however, the Board relied on a theory that neither the Patent Owner nor Petitioner raised. Petitioner appealed, arguing that the claim was invalid and that the Board violated the Administrative Procedure Act (APA) by relying on the newly-raised theory without giving Petitioner an opportunity to rebut the Board’s position. The Federal Circuit held that because it is ultimately Petitioner’s burden to prove invalidity, neither the Board nor a Patent Owner is required to preview flaws in Petitioner’s case prior to a final written decision. The Federal Circuit noted that if a Petitioner disagrees with the findings of a final written decision, the proper way to challenge those findings is through a request for rehearing or appeal.

TAKEAWAY: Petitioner carries the burden of proving invalidity and should address any potential flaws in the arguments during the proceeding. To the extent that the Board adopts a position in its final written decision that was not raised by either party, the only way to respond is through a request for rehearing or an appeal.

ARTHREX UPDATE

As the Arthrex case continues, the parties, the federal government, and several amici have all filed briefs with the Supreme Court. The case was distributed for conference on September 29.

Special thanks to Summer Associate Gabriella Montes for her contributions to this month’s edition.