Tag: PTAB

PTAB MTA Pilot Program to the Rescue

On review of a final written decision from the Patent Trial & Appeal Board in an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that all challenged claims were obvious but left open the possibility of the patent owner amending the claims under the Motion to Amend (MTA) Pilot Program. ZyXEL Communications Corp. v. UNM Rainforest Innovations, Case Nos. 22-2220; -2250 (Fed. Cir. July 22, 2024) (Dyk, Prost, Stark, JJ.)

ZyXEL Communications petitioned for IPR challenging claims 1 – 4, 6, 7 and 8 of a patent owned by UNM Rainforest Innovation (UNMRI). The patent relates to methods for constructing frame structures in communication systems using orthogonal frequency-division multiple access (OFDMA) technologies. The patent describes a method for constructing a frame structure with two sections, each of which is configured for a different communication system, where the second communication system is used to support high mobility users (i.e., faster moving users).

Before the Board, ZyXEL argued that claims 1 – 4, 6 and 7 were unpatentable in light of two prior art references (Talukdar and Li), and that claim 8 was unpatentable in light of Talukdar and another prior art reference (Nystrom). During the Board proceedings, UNMRI filed a contingent motion to amend if any of the challenged claims were found to be unpatentable. As part of its motion, UNMRI requested preliminary guidance from the Board pursuant to the Board’s MTA Pilot Program. In its opposition to UNMRI’s motion to amend, ZyXEL argued that UNMRI’s amended claims lacked written description support, and in its preliminary guidance, the Board agreed. UNMRI attempted to file a revised motion to amend, but the Board rejected the revised motion and instead permitted UNMRI to file a reply in support of its original motion. It also allowed ZyXEL to file a sur-reply. The Board determined that claims 1 – 4, 6 and 7 were unpatentable, but that claim 8 was not. The Board also granted UNMRI’s motion to amend and determined that the new claims were nonobvious over the prior art of record. Both sides appealed.

With respect to the Board’s decision on the obviousness of claims 1 – 4, 6 and 7, the Federal Circuit found that substantial evidence supported the ruling. UNMRI’s primary argument was that a person of skill in the art (POSA) would not have been motivated to combine Talukdar and Li, but the Court credited the Board’s reliance on ZyXEL’s expert, who demonstrated sufficient motivation to combine the two references.

The Federal Circuit reversed the Board’s finding that claim 8 had not been shown to be obvious, however. The Court noted that while the Nystrom reference may not explicitly state the benefit of the missing limitations, “a prior art reference does not need to explicitly articulate or express why its teachings are beneficial so long as its teachings are beneficial and a POSA would recognize that their application was beneficial.”

Regarding UNMRI’s motion to amend, ZyXEL argued that the Board erred in granting the motion because UNMRI did not satisfy the requirement that the motion itself contain written description support for all of the claim limitations of the substitute claims. The parties agreed that UNMRI’s reply contained the missing written description, but ZyXEL argued that this could not cure the procedural defect. The Federal Circuit acknowledged the procedural error but determined that “the core purpose of the MTA Pilot Program is to allow for the correction of errors in the original motion [and is thus] designed to allow reply briefs to address and correct errors.” The Court noted that ZyXEL had opportunity to respond in its sur-reply brief. The Court upheld the Board’s decision to grant UNMRI’s motion to amend and remanded the IPR back to the Board to determine, in light of the Court’s rulings on claim 8 and the fair teachings of Nystrom, whether the substitute claims were nonetheless obvious.

The Federal Circuit also reminded the Board that it may sua sponte identify a patentability issue for the proposed substitute claims based on any prior art of record in the proceedings.

© 2024 McDermott Will & Emery
For more news on PTAB’s Motion-to-Amend Pilot Program, visit the NLR  Intellectual Property section.

For All Patent/Trademark Practitioners: USPTO Provides Guidance for Use of AI in Preparing USPTO Submissions

The USPTO expounds a clear message for patent and trademark attorneys, patent agents, and inventors: use of artificial intelligence (AI), including generative AI, in patent and trademark activities and filings before the USPTO entails risks to be mitigated, and you must disclose use of AI in creation of an invention or practice before the USPTO if the use of AI is material to patentability.

The USPTO’s new guidance issued on April 11, 2024 is a counterpart to its guidance issued on February 13, 2024, which addresses AI-assisted invention creation process. In the new guidance issued on April 11, 2024, USPTO officials communicate the risks of using AI in preparing USPTO submissions, including patent applications, affidavits, petitions, office action responses, information disclosure statements, Patent Trial and Appeal Board (PTAB) submissions, and trademark / Trademark Trial and Appeal Board (TTAB) submissions. The common theme between the February 13 and April 11 guidance is the duty to disclose to the USPTO all information known to be material to patentability.

Building on the USPTO’s existing rules and policies, the USPTO’s April 11 guidance discusses the following:

(A) The duty of candor and good faith – each individual associated with a proceeding at the USPTO owes the duty to disclose the USPTO all information known to be material to patentability, including on the use of AI by inventors, parties, and practitioners.

(B) Signature requirement and corresponding certifications – using AI to draft documents without verifying information risks “critical misstatements and omissions”. Any submission for the USPTO in which AI helped prepare must be carefully reviewed by practitioners, who are ultimately responsible, to ensure that they are true and submitted for a proper purpose.

(C) Confidentiality of information – sensitive and confidential client information risks being compromised if shared to third-party AI systems, some of which may be located outside of the United States.

(D) Foreign filing licenses and export regulations – a foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States. Practitioners must ensure data is not improperly exported when using AI.

(E) USPTO electronic systems’ policies – Practitioners using AI must be mindful of the terms and conditions for the USPTO’s electronic system, which prohibit the unauthorized access, actions, use, modifications, or disclosure of the data contained in the USPTO system in transit to/from the system.

(F) The USPTO Rules of Professional Conduct – when using the AI tools, practitioners must ensure that they are not violating the duties owed to clients. For example, practitioners must have the requisite legal, scientific, and technical knowledge to reasonably represent the client, without inappropriate reliance on AI. Practitioners also have duty to reasonably consult with the client, including about the use of AI in accomplishing the client’s objectives.

The USPTO’s April 11 guidance overall shares principles with the ethics guidelines that multiple state bars have issued related to generative AI use in practice of law, and addresses them in the patent- and trademark-specific context. Importantly, in addition to ethics considerations, the USPTO guidance reminds us that knowing or willful withholding of information about AI use under (A), overlooking AI’s misstatements leading to false certification under (B), or AI-mediated improper or unauthorized exporting of data or unauthorized access to data under (D) and (E) may lead to criminal or civil liability under federal law or penalties or sanctions by the USPTO.

On the positive side, the USPTO guidance describes the possible favorable aspects of AI “to expand access to our innovation ecosystem and lower costs for parties and practitioners…. The USPTO continues to be actively involved in the development of domestic and international measures to address AI considerations at the intersection of innovation, creativity, and intellectual property.” We expect more USPTO AI guidance to be forthcoming, so please do watch for continued updates in this area.

Copyright © 2024 Womble Bond Dickinson (US) LLP All Rights Reserved.
For more news on the Use of AI in Preparing Patent Applications, visit the NLR Intellectual Property section.

Petitioner Succeeds in Wiping Out Challenged Claims at PTAB

Background

In Micron Technology Inc. v. Godo Kaisha IP Bridge 1, IPR2020-01007, Paper 36 (P.T.A.B. Dec. 1, 2021), the Patent Trial and Appeal Board found claims 1−17 of U.S. Patent No. 6,424,041, which described semiconductor devices designed to prevent copper from diffusing from wiring into memory storage regions, unpatentable. The Board’s decision, which determined that the claims were unpatentable as obvious in light of the prior art, undertook both a claim construction and obviousness determination.

Claim Construction

The Board’s decision construed two terms: “memory storage portion” and “copper-diffusion blocking means.” The primary dispute regarding “memory storage portion” was whether it must contain “access circuitry.” The Patent Owner argued that the “memory storage portion” must include access circuitry. After reviewing the specification, the Board construed “memory storage portion” to mean “the region where at least the components that are used for the storage of information are located” and determined that no access circuitry was required. Id. at *23. Then, the Board took to determining the meaning of the term “copper-diffusion blocking means,” which was a means-plus-function limitation under 35 U.S.C. § 112. To construe this term, the Board determined what the claimed function was and identified the structures or materials disclosed in the specification that corresponded to the means for performing that function. Considering the specification, the Board agreed with the Petitioner’s proposed construction that the claimed function of the term was “blocking copper diffusion from said wiring portion toward said memory storage portion,” and the corresponding structures were a ceiling film or a vertical wall, and equivalents of these. Id. at *28.

Obviousness

The Board determined that Petitioner made a sufficient showing that claims 1−17 would have been obvious in light of two prior art references, Kishii and Ryan.

The parties disputed whether Kishii taught “a memory storage portion on a main surface of said semiconductor substrate.” Id. at *32. The petitioner argued that Kishii’s stacked fin capacitor was a memory storage portion. The patent owner disputed this contention, arguing that the petitioner did not show that Kishii’s capacitor stored information and the stacked fin capacitor may be used for a different purpose in dynamic random-access memory (“DRAM”), such as a decoupling capacitor that does not store information. Petitioner offered expert testimony, which cited examples where a stacked-fin capacitor had been previously used in a DRAM memory cell, as opposed to decoupling circuitry. The Board was persuaded by Petitioner’s expert and found Kishii’s stacked-fin capacitor was a portion or component of a semiconductor device that stored information.

Next, the Board determined that a person of ordinary skill in the art would have been reasonably motivated to combine Kishii and Ryan to teach using a copper wire, as required by claim 1, given Ryan’s teaching that copper was a preferred material for such interconnect layers due to its low resistivity, low cost, and enhanced reliability. The Board found the final limitation of claim 1 was taught by Kishii, which was determined to teach a protective film that was “structurally indistinguishable” from the ’041 patent and performed the same claimed function as claim 1 required.

Additionally, the Board determined that petitioner made a sufficient showing that claims 13 and 14 would have also been obvious over Liang and El-Kareh. Claims 13 and 14 added the claim limitation – “wherein the memory storage portion is a memory storage portion for accumulating and releasing charges according to information.” Id. at *59. Combining the prediction from El-Kareh that protection against degradation would be necessary, and Liang’s ability to protect against said degradation, the Board determined that the two references taught a reasonable expectation of success for the limitation of claims 13 and 14.

© 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Article By Emma N. Ng, Shannon M. Patrick and Amanda K. Murphy, Ph.D. of Finnegan

For more articles on IP, visit the NLR Intellectual Property section.

Disclaiming Patent Claims Leads PTAB to Grant a Request for Adverse Judgment

In Arsus, LLC v. Unified Patents, LLC, (Fed. Cir. Nov. 16, 2021), the Federal Circuit affirmed, through a Rule 36 judgment, the PTAB’s ruling granting a Request for Adverse Judgment After Institution of Trial.

Arsus initially sued Tesla Motors, Inc. for patent infringement in the Northern District of California asserting U.S. Patent No. 10,259,494. The ’494 patent is directed to a “rollover prevention apparatus.” The patent describes an “adaptive steering range limiting device,” which “prevents the steering wheel of the vehicle from being turned beyond the threshold of vehicle rollover, but otherwise does not restrict the rotational range of motion of the steering wheel of the vehicle.”

Unified Patents filed for inter partes review, challenging Arsus’ claims as being unpatentable under 35 U.S.C. § 103. Arsus then filed for statutory disclaimer of all challenged claims with the USPTO under 37 C.F.R. 1.321(a), and subsequently filed a Motion to Dismiss with the Board. In doing so, Arsus argued that because all of the claims at issue were disclaimed, there was no longer any case or controversy, and thus the Board had no jurisdiction to do anything other than to dismiss the IPR. However, the Board construed Arsus’s disclaimer as a Request for Adverse Judgment under 37 C.F.R. § 42.73(b), and terminated the IPR in favor of Unified Patents.

Arsus responded by filing a Motion to Vacate Judgment and, relying on Federal Circuit precedent from Sanofi-Aventis U.S. v. Dr. Reddy’s Laboratories, Inc., 933 F.3d 1367, 1373-75 (Fed. Cir. 2019), argued that the Board did not have jurisdiction to enter the Judgment because the disclaimer mooted the IPR petition and “deprived the Board of subject matter jurisdiction.”  Unified Patents, LLC v. Arsus, LLC, IPR2020-00948, Paper 19, 3 (PTAB Jan. 29, 2021). The Board, however, pointed out that Sanofi-Aventis concerned a district court’s jurisdiction under Article III of the Constitution, and determined that Arsus failed to show that the same requirements applied to administrative proceedings.

Arsus subsequently appealed to the Federal Circuit, which affirmed without opinion by issuing a Rule 36 judgment.

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Article By Andrew N. Schneider, Shannon M. Patrick and Amanda K. Murphy, Ph.D. of Finnegan

For more articles on the PTAB, visit the NLR Intellectual Property section.

Patent Trial and Appeal Board Provides Guidance on Timing of Requests for Certificates of Correction During PTAB Proceedings

The Patent Trial and Appeal Board (“Board”) recently issued a decision in Emerson Electric Co. v. Sipco, LLC (IPR2016-00984) (Jan. 24, 2020) that illustrates some important points for patent practitioners to consider when requesting a certificate of correction for a patent subject to a Petition for Inter Partes Review before the United States Patent and Trademark Office (USPTO).

The Board’s recent decision was the result of numerous proceedings before both the Board and the Federal Circuit, which began with Emerson Electric Co. filing a Petition for Inter Partes Review against Sipco, LLC (Patent Owner) on April 29, 2016.  The Board issued a final written decision that found all challenged claims unpatentable under at least one ground on October 25, 2017.  This decision was appealed by the Patent Owner to the Federal Circuit, and on appeal the Patent Owner requested that the Federal Circuit remand the case back to the Board based on a certificate of correction that had issued for the patent in question (8,754,780; “’780 patent”) after the date of the Board’s final written decision.  (Id.)  The Federal Circuit granted this request, and remanded the matter with an Order requesting the Board to address the issue of “what, if any, impact the certificate of correction had” on the Board’s final written decision.

On remand, the Board found that the earliest priority date to which the challenged claims of the ’780 patent were entitled was April 2, 2013, and refused to recognize the belatedly issued certificate of correction that would have changed the earliest priority to an earlier date in favor of the Patent Owner.  This was because the certificate of correction did not issue until March 27, 2018, which was five months after the Board’s final written decision and three months after the Patent Owner appealed to the Federal Circuit.  (Id. at 5.)

A patent owner is permitted to request a certificate of correction in accordance with 37 C.F.R. § 1.323, which allows patent owners to ask the Director to make corrections to “mistakes” in a patent.  See 35 U.S.C. § 255.  In this case, the Board noted a series of mistakes and oversights by the Patent Owner in seeking a proper certificate of correction.  Although the Patent Owner filed a certificate of correction with the USPTO Petitions Branch about one month after the filing date of the Petition for Inter Partes Review, the Patent Owner failed to seek permission from the Board to do so, either before or after this filing.  The USPTO dismissed the Patent Owner’s first request for correction, and although the Patent Owner’s second request was thereafter granted, the second request had no chain of priority to the first, and so the USPTO Petitions Branch treated it as a new request for correction.  (Id. at 7-8.)

The Patent Owner then made a third request for a certificate of correction, and this time made its request to the Board, but this request was ultimately denied.  (Id. at 8.)  The Board later permitted the Patent Owner to submit a request for a certificate of correction to the USPTO Petitions Branch, and the Patent Owner did so.  However, the USPTO Petitions Branch found there was no chain of priority to the first certificate of correction request, because the Patent Owner had again failed to “make a reference to the first (earliest) application and every intermediate application.”  (Id. at 9.)  Finally, and without any motion to the Board, the Patent Owner submitted a final request for a certificate of correction to the USPTO Petitions Branch, and this request was granted – leading to a certificate of correction issuing on March 27, 2018 that set forth a priority claim material to the final written decision of October 25, 2017.

The Board determined that the belatedly issued certificate of correction was well after its initial final written decision and should not be given retroactive effect so as to alter its initial decision.  In considering both sides’ arguments, the Board turned to analyzing the language of 35 U.S.C. § 255, and whether or not it permits retroactive effect of a certificate of correction in an Inter Partes Review proceeding.  The Board ultimately found that section 255 does not authorize such a retroactive effect.  In other words, under the facts presented, the Patent Owner’s corrections of its mistakes in priority claims through a certificate of correction issued after the date of the Board’s final written decision did not apply back to the time when the Petition for Inter Partes Review was filed.  Further, the Board made clear that “once a petition for inter partes review of a patent has been filed, the Board may exercise jurisdiction over a request for a certificate of correction, and may stay the request,” citing to 35 U.S.C. § 315(d), 37 C.F.R. §§ 42.3 and 42.122.  (Id. 22.)  The Board noted that its decision that the finally issued certificate of correction had no impact on its earlier final written decision was consistent with the Board’s exercise of exclusive USPTO jurisdiction over a patent once Inter Partes Review is instituted.  (Id. at 22-23.)

Key Takeaway

Although non-precedential, the Board’s decision illustrates that it is best to file a request for a certificate of correction of a patent before Inter Partes Review is instituted.  After institution, the Board has discretion to stay, and effectively deny, a patent owner’s ability to request a certificate of correction that can determine the outcome of the Inter Partes Review proceeding before the USPTO.

© 2020 Brinks Gilson Lione. All Rights Reserved.

For more PTAB decisions, see the National Law Review Intellectual Property law section.

How to Get a PTAB Decision Designated Precedential

This past year, we have seen the Patent Trial and Appeal Board (PTAB) designate a number of decisions as precedential and informative more so than in past years. This is directly a result of the USPTO’s revised Standard Operating Procedure 2 (SOP2). On September 20, 2018, the USPTO announced that Board decisions can now be designated as precedential or informative through either one of two tracks: (1) POP Review or (2) a “ratification” process.

Under both tracks, a newly formed Precedential Opinion Panel (POP) comprising of at least three members will decide whether the decision should be designated as precedential or informative. Members of the POP will be selected by the Director and, by default, will comprise the Director, the Commissioner of Patents and the Chief Judge. The three members of the POP may each decide to delegate their authority in certain circumstances.

POP Review

POP Review under the first track is a rehearing of an issue in a pending trial. A party to a proceeding or any other member of the Board may recommend POP review—or a rehearing—of a particular Board decision. The request for POP review should be limited to situations where the Board decides issues of exceptional importance involving policy or procedure. A screening committee will review the recommendations and forward its recommendations to the Director. The Director will then convene with the POP to decide whether to grant rehearing, and if rehearing is granted, to render a decision on rehearing of the case.

If POP review is ordered, the Order will identify the issues the POP intends to resolve, may request additional briefing from the parties and, in some cases, may authorize amicus briefs. The POP may also order, at its discretion, an oral hearing. The decision resulting from POP Review will then be designated precedential, informative, or “routine.”

At this time, only two decisions have been issued by the newly formed POP:

  • Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2018-00914, Paper 38 (Mar. 13, 2019) (designated: Mar. 13, 2019)

  • GoPro, Inc. v. 360Heros, Inc., Case IPR2018-01754, Paper 38 (Aug. 23, 2019) (designated: Aug. 23, 2019)

Please see my latest blog post on the GoPro decision regarding the one-year time bar under 35 U.S.C. § 315(b).

To request POP review, a party to the proceeding must submit a request by email to Precedential_Opinion_Panel_Request@uspto.gov. The email must identify with particularity the reasons for recommending POP review along with a request for rehearing filed with the Board under 37 C.F.R. § 41.52(a) or 42.71(d). In addition, counsel must also include a statement that the Board’s decision for which rehearing is requested was contrary to law or is a question of exceptional importance.

“Ratification” process

Under the second track, the public may nominate already issued decisions to be designated precedential or informative. Under this track, the Board is relying on the public to recognize which decisions are valuable to post-grant practice. This is the more traditional path for which a decision may be designated as precedential or informative. In this past year, there have been more than a dozen decisions that have been designated as precedential or informative through this ratification process. As above, a screening committee will review the recommendations and the Director will then convene with the POP to decide whether to designate the decision as precedential or informative.

Nominations should be submitted by email to PTAB_Decision_Nomination@uspto.gov and must set forth with particularity the reasons for the requested designation.

To learn more about the process under either track described above, I recommend reviewing the revised Standard Operating Procedure 2 (SOP2) online which provides the detailed procedural requirements for nominating a decision as precedential or informative.

© Polsinelli PC, Polsinelli LLP in California
ARTICLE BY Margaux A. Savee of Polsinelli PC.

Reading the Supreme Court Tea Leaves in Dex Media Inc. v. Click-to-Call Technologies, LP

On June 24, 2019, the U.S. Supreme Court granted the petition for certiorari in Dex Media Inc. v. Click-to-Call Technologies, LP. Next term, the Court will determine whether 35 U.S.C. § 314(d) permits appeal of the U.S. Patent Trial and Appeal Board’s decision to institute inter partes review upon finding that 35 U.S.C. § 315(b)’s time bar did not apply.

The Dex Media case has traveled a long and tortuous path. Its journey began with the service of a complaint in 2001 which was dismissed without prejudice in 2003, and the filing of a new complaint in 2012. The petition for inter partes review was filed in May 2013, and a final written decision of the Board issued in October 2014 finding that the asserted claims are invalid. From there, the case visited the Federal Circuit twice, the Supreme Court once and is now on its way back for a second time. On appeal, the dispute has focused on whether the petition for inter partes review was time barred by § 315(b), and whether the Federal Circuit has jurisdiction to hear the appeal of that issue.

Facts of the Case

In 2001, Inforocket.com, Inc., an exclusive licensee to the patent-in-suit, filed a district court action against Keen, Inc. The complaint asserting infringement was served on September 14, 2001. While the case was pending, Keen acquired Inforocket as its wholly owned subsidiary and stipulated to a voluntary dismissal of the district court action without prejudice in 2003. Keen later changed its name to Ingenio. Click-to-Call subsequently acquired the patent-in-suit, and on May 29, 2012, filed patent infringement lawsuits against multiple parties, one of which was Ingenio.

On May 28, 2012, just under one year after being served with the complaint in the Click-to-Call action, Ingenio and two other defendants filed a petition for inter partes review (IPR) of the patent-in-suit. In its preliminary response, Click-to-Call contended, among other things, that § 315(b) statutorily barred institution of the IPR proceedings, noting that Ingenio’s predecessor-in-interest was served with a complaint alleging infringement of the patent-in-suit in 2001. Section 315(b) states, “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real part in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”

The Board instituted the proceeding, and based on Federal Circuit precedent found that dismissal of an infringement suit without prejudice nullifies the effect of the service of the original complaint against Keen. Therefore, service of the 2001 complaint did not bar the petition. Click-to-Call again argued that the petition was time-barred in its patent owner response; and in its final written decision, the Board reaffirmed its earlier conclusion on that point and found that the challenged claims were invalid.

In the case being reviewed by the Supreme Court, the Federal Circuit first had to decide whether it had jurisdiction to hear an appeal of the § 315(b) time bar in light of § 314(d), which states, “No Appeal. – The determination by the Director whether to institute an inter partes review under this section shall be final and unappealable.” The Federal Circuit, relying upon its en banc ruling in Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018), held that time-bar determinations under § 315(b) are appealable.

In Wi-Fi One, the Federal Circuit based its finding on the rationale that the time-bar determination “is not akin to either the non-initiation or preliminary-only merits determinations for which unreviewability is common in the law,” and the fact that the time bar “sets limits on the Director’s statutory authority to institute.” Id. at 1373-74. Having decided the question of appealability, the Click-to-Call court then held en banc that the time-bar decision applies to bar institution of an IPR when a petitioner was served with a complaint for patent infringement more than one year before filing its petition, but the action was voluntarily dismissed without prejudice.

Predictions for the Supreme Court

Often, even without the presence of a circuit court split, the Supreme Court takes cases on appeal from the Federal Circuit to reign in and overrule the Appellate Court. In fact, the Supreme Court has reversed 70 percent of the Federal Circuit cases it has heard since 2007. There are two important factors to suggest that the Supreme Court will for a second time reverse the Federal Circuit in this case.

  • First, in a prior appeal of this case to the Federal Circuit in 2015, the Federal Circuit dismissed the appeal for lack of jurisdiction based on its prior precedent in Achates Reference Publishing, Inc. v. Apple Inc., which was subsequently overruled by Wi-Fi One. Click-to-Call petitioned the Supreme Court for review, and in June 2016, the Supreme Court granted cert, and vacated and remanded the case to the Federal Circuit to consider in light of the Supreme Court’s ruling in Cuozzo Speed Technologies, LLC v. Lee. This suggests that, at the time, the Supreme Court thought there was a clear path for the Federal Circuit to hold that § 315(b) rulings are appealable, as the Federal Circuit did in both Wi-Fi One and its ruling that is currently under review. Since then, the composition of the Supreme Court has changed, with Justice Kennedy’s retirement and the confirmation of Justices Gorsuch and Kavanaugh. It seems now that at least four of the justices of the newly constituted Court may believe that the Federal Circuit’s decision is not consistent with § 314(d).
  • This contention also is supported by the fact that the Supreme Court declined to review both of the questions presented by the petition for cert. Dex Media, Inc., the successor-in-interest to Ingenio, also requested that the Supreme Court decide whether § 315(b) bars institution of an inter partes review when the previously served patent infringement complaint, filed more than one year before the IPR petition, had been dismissed without prejudice. The Supreme Court declined to hear that issue. One might suppose that if the Supreme Court believes the time-bar question is appealable, the Court also would want to rule on whether a dismissal without prejudice negates the effect of service of the complaint under the time bar statute. It is entirely possible that the Court declined to make that determination because the question will be moot once the Court determines there is no appellate jurisdiction over the time-bar issue.

Implications of the Ruling

If the Supreme Court affirms the Federal Circuit’s ruling and finds that § 315(b) questions are appealable, the Federal Circuit’s jurisprudence regarding when the one-year period begins will remain binding, at least until the Supreme Court decides to hear that issue anew. This means that entities looking to file IPR petitions must be alert to the fact that a predecessor-in-interest may have been served with a complaint triggering the one-year time limit as well as whether to file a petition with other entities who (directly or through a predecessor-in-interest) may have been served with complaints that could bar the entire petition.

In contrast, what will happen if the Supreme Court reverses the Federal Circuit’s ruling and Orders dismissal of the appeal on the grounds that § 314(d) prohibits appeal of the time bar issue? Prior to the Federal Circuit’s ruling, the Board had consistently found, as they did in this case, that dismissal of a complaint without prejudice constituted a nullity in terms of the time-bar statute. If the Federal Circuit’s opinion in this case is overruled, its opinion would not be precedential and the Board could either interpret the statute as they had previously or alter the interpretation in view of the Federal Circuit’s opinion, though they would be under no obligation to do so. It also is possible that this becomes one of the many issues that are panel-dependent, forcing petitioners who were served with complaints that have been dismissed without prejudice to “roll the dice” on the issue.

PTAB practitioners should be watching the outcome of this case closely and consider all of the implications of the ruling before filing a petition for inter partes review. As the facts of this case highlight, they also should perform a thorough due diligence review of all “real parties in interest” related to the contemplated petitioner.

©2019 Drinker Biddle & Reath LLP. All Rights Reserved

Game Over: Obviousness Can Be Based on a Single Prior Art Reference

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) obviousness decision, finding that obviousness can be based on a single prior art reference if modifying that prior art reference is found to be obvious. Game and Technology Co., Ltd. v. Activision Blizzard Inc., Case No. 18-1981 (Fed. Cir., June 21, 2019) (Wallach, J).

Game and Technology (GAT) owns a patent directed to a method for generating a “gamvatar” by combining game items with layers of an avatar in online games. Activision Blizzard and Riot Games sought and were granted inter partes review of the patent. During the proceeding, the PTAB construed the term “gamvatar” to be a combination of an avatar with a game item function, and construed the term “layers” to mean display regions. The PTAB issued a final written decision finding the challenged claims obvious based on a user manual for a video game called Diablo II. GAT appealed.

On appeal, GAT argued that the PTAB erred in construing the terms “gamvatar” and “layers,” and further argued that the PTAB erred in its determination that the claimed method would have been obvious over the Diablo II manual.

Addressing claim construction, GAT argued that the PTAB’s construction of “gamvatar” was broader than the broadest reasonable interpretation BRI, and argued that “gamvatar” should mean “concurrently usable online and in the game.” The Federal Circuit rejected GAT’s argument, finding that the PTAB did not err in construing the term “gamvatar” because the claims and specification both showed that “gamvatar” is a combination of an avatar with a game item function and is not limited to “concurrently useable online and in the game.” As to the term “layers,” GAT argued that the term should be construed as regions for displaying graphical objects where the layers are displayed on the avatar. The Court disagreed, finding that the claim and the specification supported the PTAB’s construction of the term “layers” to mean display regions.

Turning to obviousness, GAT argued that the PTAB erred in using the user manual to find obviousness because a “a single reference . . . cannot support obviousness.” The Federal Circuit rejected GAT’s argument as a matter of law, finding that a patent can be obvious based on a single prior art reference if it would have been obvious to modify the reference to arrive at the claims invention. Applying that standard here, the Federal Circuit found that the PTAB did not err in its obviousness decision because the PTAB’s finding that the Diablo II manual teaches the “gamvatar” and the “layers” limitations was supported by substantial evidence.

 

© 2019 McDermott Will & Emery
For more in PTAB cases, please see the Intellectual Property type of law page on the National Law Review.

Adequacy of Explanation Remains Key Area of PTAB Reversal

In Vivint, Inc. v. Alarm.com, Inc., the Federal Circuit reversed a claim construction by the Patent Trial and Appeal Board (“PTAB”) which “suggest[ed] the opposite” of the teachings of the patents at issue, and gave guidance to practitioners on when the Board’s reliance on expert testimony entitles the Board’s construction to deference. The Court’s non-precedential opinion is consistent with a string of recent decisions stressing the PTAB’s obligation to adequately explain its decisions.

Vivint’s patents are directed to systems and methods for remotely monitoring home equipment, such as an HVAC system. “Communication device identification codes” are assigned to the user’s remote devices, and the system notifies a particular user in case of the equipment’s malfunction through “message profiles” (e.g., settings to notify different users if a malfunction occurs during the day versus at night). The Board construed “communication device identification codes” as “something ‘capable of uniquely identifying communication devices,’” which the Board found included either a device ID or a serial number of a device (variables from one of Vivint’s patent’s figures), but excluded phone numbers and email addresses.

The Federal Circuit reversed the Board’s construction, pointing out that Vivint’s patents did not define “communication device identification codes,” and that the exclusion of phone numbers or email addresses as identification codes “defie[d] the patents’ teachings” which “expressly [taught] that a phone number can uniquely identify a . . . communication device.” The Court explained:

Even assuming [the Board’s construction] is correct, however, the Board’s conclusion that a phone number or email address cannot uniquely identify a communication device defies the patents’ teachings. For example, both patents explain that a mobile identification number refers to a device in the same way that a phone number refers to a cellular phone, i.e. a communication device. . . . But the Board’s construction suggests the opposite. . . . That the ’123 patent includes “Device ID” and “Serial Number” variables in a particular figure, for example, suggests these variables might also be used to identify communication devices. It does not suggest that phone numbers and email addresses cannot also do so.

The Court also rejected Vivint’s assertion that the Board’s construction was “entitled to deference because it relied on extrinsic evidence,” Vivint’s expert testimony. The Court found that the Board’s construction was “without reference to any extrinsic evidence,” finding that although “[t]he Board did credit Vivint’s expert,” it did so “only in applying its construction . . . to the prior art.” As further support, the Court pointed to the Board’s statement that its construction was “[b]ased on [its] review of the claims and Specification of the ’601 patent.”

Takeaways:

Vivint clarifies for practitioners that expert testimony applying a construed term may not constitute a factual finding entitled to deference on appeal, as opposed to expert testimony that is cited in support of the proper construction itself. This distinction may be especially impactful in view of the Court’s “substantial evidence” standard of review for findings of fact, which is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”

Vivint is also in line with a string of recent Federal Circuit decisions stressing the PTAB’s obligation to “set forth a sufficiently detailed explanation of its determinations both to enable meaningful judicial review and to prevent judicial intrusion on agency authority.” Rovalma, S.A. v. Böhler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1024 (Fed. Cir. 2017). See, e.g., Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042-48 (Fed. Cir. 2017) (finding Board’s adoption of petitioner’s brief did not “transform [the petitioner’s] attorney argument into factual findings or supply the requisite explanation that must accompany such findings”); In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (Board’s finding that it would have been intuitive to combine prior art lacked the requisite reasoning because “[a]bsent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’”); Emerson Elec. Co. v. SIPCO, LLC, No. 2017-1866, 2018 U.S. App. LEXIS 24499, at *1 (Fed. Cir. Aug. 29, 2018) (non-precedential) (“Because the Board did not adequately explain its reasoning on a point that was central to its analysis and its conclusion on that point was contrary to another Board opinion on nearly identical facts, we vacate the Board’s determination as to the appealed claims and remand for further proceedings.”). Practitioners preparing an appeal strategy would do well to keep in mind the Court’s focus on the PTAB’s obligation to fully explain its determinations.

Citation: Vivint, Inc. v. Alarm.com, Inc., ___ F.3d ___, 2018 U.S. App. Lexis 35817 (Fed. Cir. Dec. 20, 2018).

© Copyright 2019 Brinks Gilson & Lione.

This post was written by Jafon Fearson and James Naughton of Brinks Gilson & Lione.

SAS Indirectly Strengthens the Impact of Estoppel

The Supreme Court decision in SAS Institute v. Iancu[i]will likely strengthen a patent owner’s ability to argue in favor of estoppel and keep a petitioner from getting multiple bites at the invalidity apple in parallel PTAB and district court proceedings. At first glance the Supreme Court’s recent decision appears to be another setback to patent owners. Instead of quickly defeating post grant challenges to at least some challenged claims pursuant to a denial of institution, patent owners will now have to fight petitions even if the Board finds merit with only a single ground challenging patentability. Upon closer examination, however, SAS’s implications for estoppel are favorable and may even resolve a split concerning the scope of estoppel.

The Supreme Court Directive in SAS

SAS addressed the PTAB’s “partial institution” policy, under which the PTAB claimed the power to institute an IPR with respect to only some of the claims challenged in a petition. In SAS, the Supreme Court rejected that policy. The Court explained that if the PTAB decides to institute an IPR, 35 U.S.C. § 318(a) provides that PTAB “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.” Emphasizing the statute’s use of the phrase “any patent claim,” the Court held that PTAB cannot pick and choose which claims to address, but must instead take the petition as it finds it.[ii] The Court found further support for its interpretation in the structure of the inter partes review process “in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.”[iii]

The Split on Estoppel

The partial institution policy that SAS rejected has created a split in the interpretation of estoppel under 35 U.S.C. § 315(e). Section 315(e)(2) provides that “[t]he petitioner in an inter partes review . . . that results in a final written decision under section 318(a) . . . 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 that inter partes review.” Congress intended this provision to preclude the same party from re-litigating invalidity in the district court once it had chosen to do so through an IPR. As then-Director of the PTO David Kappos testified, the “estoppel provisions mean that your patent is largely unchallengeable by the same party.”[iv] Similarly, Senator Grassley stated that IPR review “will completely substitute for at least the patents-and-printed-publications portion of the civil litigation.”[v]

Notwithstanding the apparently broad estoppel envisioned by Congress, some courts have interpreted § 315(e) more narrowly. For example, in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., the Federal Circuit explained that where PTAB partially instituted an IPR, the petitioner was not estopped from raising a ground in district court that it had included in its IPR petition but on which PTAB did not institute. The court reasoned that the non-instituted ground was not raised “during th[e] inter partes review.”[vi] Similarly, in HP Inc. v. MPHJ Technology Investment, LLC, the Federal Circuit explained that “noninstituted grounds do not become a part of the IPR,” and “[a]ccordingly, the noninstituted grounds were not raised and, as review was denied, could not be raised in the IPR.” The court therefore held that “the estoppel provisions of § 315(e)(1) do not apply.”[vii] Other courts have followed suit and even extended that holding.[viii]

A broader interpretation of estoppel tracks what many believe to be the statutory intent, however, as a party should not get two bites at the apple and be able to seek review at both the PTAB and in the district court. Adopting this view, the court in Biscotti Inc. v. Microsoft Corp. cabined Shaw and HP to their facts, holding that they “exempt an IPR petitioner from § 315(e)’s estoppel provision only if the PTAB precludes the petitioner from raising a ground during the IPR proceeding for purely procedural reasons.”[ix] Thus, the court held that § 315(e) estopped the petitioner from asserting any ground that (1) was included in PTAB’s final written decision, (2) was not instituted for non-procedural reasons, or (3) was not included in the petition.[x] Any other decision would result in needlessly protracted litigation as petitioners would re-litigate arguments similar to those that it had already lost or strategically chose not to include in a petition.[xi] The court in Douglas Dynamics, LLC v. Meyer Products LLCtook a similar view with respect to non-petitioned grounds, holding that estoppel applies “to grounds not asserted in the IPR petition, so long as they are based on prior art that could have been found by a skilled searcher’s diligent search.”[xii]

SAS Strengthens Patent Owners’ Estoppel Arguments Because a Petitioner is Deemed to be the “Master of its Complaint”

While SAS had nothing to do with estoppel on its face, much of the disagreement regarding the scope of estoppel arose out of the PTAB’s partial institution policy and the effect of estoppel on non-instituted claims. Because the PTAB no longer has discretion as to partial institution, courts will no longer have to struggle with whether a petitioner is estopped from raising non-instituted grounds for unpatentability in a subsequent or parallel district court proceeding. While a few open issues remain, the patent owner will still be able to argue that SAS supports the idea that petitioners should only get one opportunity to challenge patentability—either at the PTAB or before a jury. The Supreme Court directive from SAS, coupled with recent guidance from the PTAB, suggests that the divide between the broad (Biscotti and Douglas Dynamics) and narrow (Shaw and HP) interpretations of estoppel—at least with respect to pre-institution decisions from the PTAB—may be merging.

Moreover, while SAS does not explicitly resolve whether a petitioner is estopped from arguing non-petitionedclaims in a parallel district court case, the premise behind the Supreme Court’s decision—that the petitioner is the master of its own petition—suggests that estoppel should apply. Some commentators have predicted that because PTAB must now choose between full institution and full denial, “petitioners [will] have an incentive to focus their petitions even further—when choosing claims to challenge, grounds to assert, and prior art to cite—in order to ensure that the likelihood of full institution is greater than the likelihood of full denial.”[xiii] But filing a targeted (and therefore stronger) petition may run the risk of estoppel on any non-petitioned claim. As Biscotti and Douglas Dynamics indicate, petitioners should not be permitted to hold arguments in reserve in case of an unfavorable result at the PTAB. Moreover, SAS supports Biscotti’s and Douglas Dynamic’s interpretation of the meaning of “during” the IPR. While Shaw characterized an IPR as not beginning until institution,[xiv]SAS depicts post grant review as a single process that begins with petitioner defining the scope of the proceeding in its petition.[xv]Applying estoppel to non-petitioned claims would not be inconsistent with a courts’ concern “that estoppel applies only to those arguments, or potential arguments, that received (or reasonably could have received) proper judicial attention.”[xvi]

 Further, SAS will still enable patent owners to rely on the same line of cases to argue for procedural estoppel. Before SAS, the PTAB frequently denied institution in view of procedural deficiencies.[xvii] Now, however, the PTAB will be faced with either denying institution for failure to comply with PTAB rules or allowing institution on all grounds even where some of the challenges are procedurally improper. For example, petitioners could present a single procedurally proper argument to open the door to review and evade page limit requirements by packing the remainder of the petition with grounds that must also be instituted under SAS but that are supported only by improper incorporations by reference.[xviii] While denying institution because of procedural failings could preclude the petitioner from filing another (procedurally proper) petition making the same arguments,[xix] the petitioner, as “master of its complaint,” could have drafted its petition correctly from the start.[xx] In short, the petitioner’s failure to follow the rules should not justify a second bite at the validity apple.

 Finally, pending petitions subject to partial institution could have the same consequences depending on the action of the petitioner post-SAS. PTAB guidance indicates that in such cases, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.”[xxi] If a petitioner fails to seek supplemental institution or fails to appeal the PTAB’s refusal to supplement, estoppel could apply. While some courts might continue following Shaw and HP by holding that non-instituted claims were not raised “during” the IPR, petitioner “could have raised” those claims and arguments “during” the IPR—even under Shaw’s interpretation—given SAS’s holding because the petitioner should have sought to remedy the non-institution.

The Takeaway

While not obvious at first glance, SAS follows recent decisions like General Plastics that tend to protect patent owners’ rights. While the focus of SAS was on institution and the scope of institution, the Court has armed patent owners with another weapon with which they can challenge serial review of the same patent on the same grounds in multiple petitions and district court proceedings.

[i] No. 16-969 (Apr. 24, 2018).

[ii] Id., slip op. at 1, 4-5.

[iii] Id., slip op. at 12.

[iv] Hr’g on H.R. 1249 Before the Subcomm. on Intell. Prop., Competition and the Internet of the H. Comm. on the Judiciary, 112th Cong. (2011) (statement of David Kappos, Dir., USPTO) (“Those estoppel provisions mean that your patent is largely unchallengeable by the same party.”)

[v] 157 Cong. Rec. S1360-94 (daily ed. Mar. 8, 2011) (statement of Sen. Grassley) (claiming that the estoppel provision “ensures that if aninter partes review is instituted while litigation is pending, that review will completely substitute for at least the patents-and-printed-publications portion of the civil litigation”).

[vi] 817 F.3d 1293, 1300 (Fed. Cir. 2016) (quoting 35 U.S.C. § 315(e)(2)).

[vii] 817 F.3d 1339, 1347 (Fed. Cir. 2016).

[ See, e.g., Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 2017 U.S. Dist. LEXIS 7728, at *8-10 (N.D. Cal. Jan. 19, 2017); Illumina, Inc. v. Qiagen N.V., 207 F. Supp. 3d 1081, 1089 (N.D. Cal. 2016).viii]

[ix] 2017 U.S. Dist. LEXIS 144164, at *21-22 (E.D. Tex. May 11, 2017).

[x] Id. at *22.

[xi] Id. at *17-18, *20-21.

[xii] 2017 U.S. Dist. LEXIS 58773, at *15.

[xiii] Saurabh Vishnubhakat, First Steps After SAS Institute, Patently-O (Apr. 27, 2018), https://patentlyo.com/patent/2018/04/first-steps-institute.html

[xiv] 817 F.3d at 1300.

[xv] Slip op. at 6, 9.

[xvi] Verinata, 2017 U.S. Dist. LEXIS 7728, at *10.

[xvii] See, e.g., Shenzhen Huiding Technology Co., Ltd. v. Synaptics Incorporated, IPR2015-01741, Paper 8 at 29-31 (PTAB Aug. 7, 2015) (partially denying institution due to improper incorporation by reference); Bomtech Elec., Co. Ltd. v. Medium-Tech Medizingeräte GmbH, Case No. IPR2014-00138, Paper No. 8 at 32-33 (PTAB Apr. 22, 2014) (same).

[xviii] See 37 C.F.R. § 42.6(a)(3).

[xix] General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017).

[xx] Id.

[xxi] Guidance on the Impact of SAS on AIA Trial Proceedings (Apr. 26, 2018) (emphasis added). 

 

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This post was written by Scott W. Hejny and Chelsea Priest of McKool Smith.