Alert October 29, 2021

Issue 35: PTAB Trial Tracker

Timing of Request Key for Board Decisions on Motions to Terminate

In Ocado Group PLC v. AutoStore Technology AS, PGR2021-00038 (July 30, 2021), Petitioner moved to withdraw its petition, arguing that efficiency favored dismissal because the challenged patent was asserted against Petitioner in ITC proceedings and the Board denied similar petitions challenging other patents in the same family. Patent Owner objected to Petitioner’s request. The Board denied the request, noting that there is no requirement to allow withdrawal over the objections of a patent owner. The Board found that the request, filed less than two weeks before the Board’s institution decision was due, came too late in the proceeding to provide any efficiency. The Board explained that withdrawing the petition would not save the parties time or expense because there was no additional briefing, discovery, or effort to be taken at the time, and also would not reduce burden on the Board, given that it had already expended significant resources on the matter.

In Samsung Electronics Co., Ltd. v. Telefonaktiebolaget LM Ericsson, IPR2021-00446 (Aug. 3, 2021), the Board granted Petitioner’s unopposed motion to terminate thirty IPR proceedings prior to institution and also granted its request not to file any settlement agreements. While the statutes and regulations explicitly require the parties to file a copy of any settlement agreement with a request to terminate an instituted proceeding, the Board found that there is no such requirement prior to institution. One Administrative Patent Judge dissented, arguing that the requirement to file settlement agreements was important regardless of institution status.

In Huawei Technologies Co. Ltd. v. Verizon Patent and Licensing Inc., IPR2021-00616, -00617 (Sept. 9, 2021), the Board granted the parties’ joint motion to dismiss IPR proceedings prior to institution and did not require the parties to file a settlement agreement. With the IPR in its pre-institution phase, and an agreement as to its outcome, the Board found that dismissal and termination under the present circumstances would facilitate the just, speedy, and inexpensive resolution of the proceedings. Judge Michael R. Zecher dissented, agreeing with the dissent in Samsung, stating that the parties should be required to file a settlement agreement. Although the parties’ joint motion to dismiss relied on the majority holding in Samsung, the dissent noted that Samsung had not been designated precedential and, therefore, was not binding on the Board.

Takeaways: Petitioners should be aware that there is no requirement that the Board grant an opposed request to withdraw a petition and that the Board may decline to do so, particularly if the proceeding has progressed to a point where withdrawal of the petition will not save time or expense. Further, while there is a statutory requirement to file a settlement agreement in connection with termination of instituted proceedings, parties may be able to avoid filing copies of settlement agreements if the proceeding is dismissed prior to institution, like Samsung and Huawei. Nonetheless, it is worth noting the dissenting opinions in these proceedings. Until there is a precedential opinion or other binding guidance establishing different requirements for filing settlement agreements depending on the status of the proceeding, application of this requirement may not be uniform. 

“Authentication by Comparison” at the PTAB

In Valve Corp. v. Ironburg Inventions Ltd., the U.S. Court of Appeals for the Federal Circuit addressed the application and operation of the Federal Rules of Evidence in proceedings before the PTAB, criticizing the Board’s stringent application of FRE 901(a). Valve Corp. v. Ironburg Inventions Ltd., U.S. Federal Circuit Court of Appeals Nos. 20-1315, -1316, -1379 (Fed. Cir. Aug. 17, 2021) (Dyk, J.). 

The two IPR petitions at issue relied on exhibits that were printed version of websites. Patent Owner challenged the sufficiency of the exhibits, arguing that Petitioner had not shown they were authentic or that the exhibits were printed publications. In response to the challenge to authenticity, Petitioner argued that the exhibits were prior art because they reflected the same content as an article cited and submitted in the prosecution histories of the patents-at-issue. Id. at 8. The Board rejected Petitioner’s showing on the ground that Petitioner had not shown that the exhibits were “the same as the asserted prior art documents in the prosecution histories.” Id. at 9. The Board also “declined to compare ... the Burns article with the Exhibit” holding “that it was not obligated to compare the two because Valve provided no testimony that the two were identical.” Id. at 11. Petitioner appealed.

The Federal Circuit reversed the Board’s findings regarding the contested exhibits, noting that “[a]uthentication by comparison is routine” and citing to Fed. R. Evid. 901(b)(3), which permits authentication of a document by a comparison with an authenticated specimen “by an expert witness or the trier of fact.” Id. at 9 (emphasis added). The Federal Circuit found that the references were “virtually identical” and “substantively the same.” Id. at 10, 12. Noting that such a comparison was “not burdensome,” the Federal Circuit held that the “Board had an obligation to make the comparison, as Rule 901(b)(3) contemplates and as the cases require.” Id. at 11.

Addressing the question of whether the Burns article was a printed publication, the Federal Circuit found there was “overwhelming evidence” that the Burns article was publicly accessible. Id. at 19. Patent Owner challenged reliance on information available through the Wayback Machine, but the Federal Circuit noted that courts have taken judicial notice of the contents of webpages available through the Wayback Machine “as facts that can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.” Id. at 16 (internal citations omitted).

The Federal Circuit remanded the case for the Board to consider Petitioner’s arguments based on the challenged exhibits. Id. at 28.

Takeaway: This is not the first instance in which the Federal Circuit reversed Board decisions based on the Board’s overly stringent application of the Federal Rules of Evidence and the printed publication requirements. Petitioners and Patent Owners alike should be aware of the Federal Circuit’s view on highly technical challenges to the admissibility and prior art status of exhibits.

Stipulations Overcome Fintiv Related Concerns

In Juniper v. Correct Transmission, IPR2021-00469 (PTAB Aug. 9, 2021), the Board did not exercise its discretion to deny a Petition under Fintiv, even though a related case was headed to trial next summer. The Petitioner agreed not to pursue any invalidity theories that could have been raised at the PTAB in the related district court case. The Board noted that “[t]he Fintiv factors weigh on both sides, however, much work remains to be completed in the parallel proceeding, and Petitioner, by its broad stipulation, mitigated concerns about duplication of effort and potential for inconsistent results.” Id. at 10.

Similarly, in Tennant Co. v. Oxygenator Water Tech., Inc., PTAB2021-00625 (PTAB Aug. 20, 2021), the Board instituted review and noted that “Petitioner unequivocally stipulates that, if the Board institutes this inter partes review, it will not pursue in the District Court litigation 'any ground raised in this petition or that reasonably could have been raised' in this proceeding.” Id. at 16.

Takeaways: The Board has made clear that a clear an unequivocable stipulation not to pursue invalidity claims in a related district court case that could have been raised during the PTAB proceedings alleviates the efficiency concerns addressed in a Fintiv analysis, and can often avoid discretionary denial.

Note: Mylan Labs. Ltd. filed a writ of certiorari to the U.S. Supreme Court urging the Court to strike down the Fintiv rule. Mylan’s petition follows Apple’s petition last month also requesting that the Supreme Court evaluate the Fintiv rule. Additionally, potential legislation has been introduced in Congress aimed to curb the Board’s ability to deny petitions based on the Fintiv factors. Further discussion available here