The Post-Grant Strategist

Joinder may allow a party to challenge patent claims with an IPR even if the one-year time bar in Section 315(b) would otherwise preclude the party from filing a petition for IPR. In Uniloc 2017 LLC v. Facebook Inc., Nos. 19-1688, -1689 (Fed. Cir. 2021), the Federal Circuit resolved whether the joining party can continue the challenge even if the original petitioner no longer can due to estoppel.

Under Section 315(e)(1), when an IPR proceeding results in a final written decision with respect to a patent claim, a petitioner, or the RPI or privy of the petitioner, “may not request or maintain” another IPR that the party “raised or reasonably could have raised” in the prior proceeding. Section 315(e)(1) serves two purposes: it protects the defending party from a second attack on the same claim and ensures that the petitioner can still bring challenges that it has not had a full and fair opportunity to do so.

In Uniloc, after a party joined an ongoing IPR, the original petitioner of that IPR became estopped from continuing its challenge due to its involvement in an earlier IPR challenging claims of the same patent. The question the Federal Circuit faced was whether the joining party was also estopped from continuing the challenge.

On appeal, the Federal Circuit found that moving to join a prior petition alone does not make a party a real party in interest (RPI) or privy of the petitioner. However, the court noted that this is highly fact-dependent. In this case, the Federal Circuit found insufficient evidence that the joining party was a RPI or in privity of the original petitioner. This means that the joining party, merely joining the original petition, was not estopped in challenging the claims.

Takeaways:

1. Joinder alone does not burden a party that has joined an IPR with the original petitioner’s estoppel. On the contrary, in an estoppel context, patent owners will need evidence other than joinder to prove a party is a RPI or privy of the petitioner. This may include, for example, evidence of joint funding, of a coordinated IPR effort, or of a sufficiently close relationship such that the party already had a chance to litigate the claim.

2. The decision clarified that when the estoppel-triggering event occurred after institution, PTAB decisions concluding that the estoppel provisions do not apply are reviewable on appeal. Contrast Uniloc with Thryv, Inc. v. Click-to-Call, 140 S. Ct. 1367 (2020) where the Supreme Court ruled that the Federal Circuit may not review PTAB time-bar determinations under Section 315(b) because the one-year time bar is “integral to, indeed a condition on, institution.” Thus, petitioners should avoid relying on the Federal Circuit for judicial review given the limited opportunities for review under Section 314(d).

3. A petitioner is not barred from continuing a challenge to a dependent claim in a second IPR when the same claim was not included in the first IPR. In this case, the Federal Circuit relied on the plain language of Section 315(e)(1) and concluded that the original petitioner was not estopped in challenging the dependent claim because it was not addressed in the final written decision of the first IPR. However, petitioners should still be careful about ongoing IPRs as it may give rise to an estoppel of the petitioners’ separate IPR on the same claims of the patent.

On appeal of a PTAB decision that all claims in a patent on compressing video files were unpatentable, the Federal Circuit clarified two issues. This post considers the second addressed issue – is the PTAB limited to the arguments made by Petitioners? The Federal Circuit found that it is.

On appeal of a PTAB decision finding all claims in a patent directed to compressing video files unpatentable, the Federal Circuit clarified two issues. This post considers the first clarified issue – what is required for a reference to be considered a printed publication for the purposes of an IPR?

In M&K Holdings v. Samsung Electronics (No. 2020-1160), the patent owner argued that several cited references did not qualify as printed publications, and thus could not be used as the basis for finding unpatentability in an IPR. Although the references were available on an industry group’s website, the patent owner argued the references were not publicly accessible, and thus could not be considered printed publications, because the references were not easily found on the website. Instead of having a single intuitive search page, a user needed to click through various links to get to the references.

The time bar in Section 315(b) says that IPR may not be instituted if the petition was filed more than one year after the petitioner was “served with a complaint alleging infringement of the patent.” A recent PTAB decision illustrates that petitioners should be wary of stepping over that line, even if there is a dispute about the patent owner’s proof of service.

(Co-authored by Elisabeth Hunt)

Discretionary denial has been a hot topic at the PTAB. On Wednesday, February 24^th, Wolf Greenfield hosted a webinar to discuss discretionary denial at the PTAB, and in particular, discretionary denial based on parallel infringement litigation in district court or the ITC.

Although judicial review of decisions during IPR typically occurs through appeal after the PTAB’s Final Written Decision, a growing number of cases are exploring other means of judicial review. Questions remain about whether those other means can provide a way to overcome the statutory limits on the appealability of IPR decisions, which we previously discussed. This post, which is the third in a series about judicial review of IPR, addresses a third trap for the unwary: the availability of alternatives to appeal.

Mandamus: Perhaps the most well-known alternative to appeal from and IPR is petitioning for a writ of mandamus. Ever since the Supreme Court’s first decision on IPRs, Cuozzo v. Lee, 136 S. Ct. 2131 (2016), left open the possibility of judicial review of constitutional and statutory rights related to institution, some have speculated that mandamus may be the best route to present those arguments. Indeed, the Supreme Court’s most recent decision on IPRs, Thryv v. Click-To-Call, 140 S. Ct. 1367 (2020), declined to foreclose the use of mandamus in “extraordinary cases.”

A series of Supreme Court cases has clarified that not all issues that arise in IPR are appealable. Thus, in addition to considering the issue of standing, which we previously discussed, a party considering appeal must also determine whether the issue it would want review can even be appealed. This post, which is the second in a series about judicial review of IPR, addresses a second trap for the unwary: the limited scope of permitted appeal.

Section 314(d) prohibits appeal of the PTAB’s decision “whether to institute [IPR] under this section.” Some interpreted that as limiting appeal only of the Institution Decision’s determination under Section 314(a) that the petition’s unpatentability arguments are sufficiently strong to deserve institution. The Supreme Court rejected that interpretation in Cuozzo v. Lee, 136 S. Ct. 2131 (2016), applying the appeal bar to the related determination under a different section that the petition was written with sufficient “particularity.”

(Co-authored by Elisabeth Hunt)

In the time since the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB), inter partes review (IPR) and other PTAB proceedings for challenging patents’ validity have proven to be powerful tools for those accused of infringement. But increasingly, the PTAB’s exercise of its discretion to deny institution of review for non–merits-based reasons has become a powerful counter-defense for patent owners. Although discretionary denial has been a feature of PTAB proceedings since their inception, the range of circumstances in which the PTAB discretionarily denies institution and the frequency with which it does so are increasing. Discretionary denial has thus become a disputed issue in an increasingly large proportion of PTAB proceedings.

Seeking judicial review of an IPR decision can be a trap for the unwary. Section 319 permits a “dissatisfied” party to appeal. And while the language may seem simple, it can lead parties astray. This post, which is the first in a series about judicial review of IPR, addresses the first trap for the unwary: the constitutional requirement of standing.

Although Section 319 might be misread to allow any “dissatisfied” party to appeal, the party must still have standing to appeal. Thus, in Droplets v. E*TRADE, 887 F.3d 1309 (Fed. Cir. 2018), the Federal Circuit held that a petitioner that won but was “dissatisfied” with the PTAB’s reasoning still could not appeal. And in SkyHawke v. Deca, 828 F.3d 1373 (Fed. Cir. 2016), a potentially analogous decision concerning reexamination, the court rejected an appeal by a winning patent owner that wanted a different claim construction.

Per the express language of 35 U.S.C. § 311, a petitioner in an IPR may request cancellation of a claim “only on a ground that could be raised under section 102 or 103.” In other words, an issued claim can only be canceled via IPR on the basis of anticipation or obviousness grounds. But once an IPR is instituted, can the PTAB also make eligibility determinations pursuant to section 101 and/or written description or enablement determinations pursuant to section 112? The answer is, in certain circumstances, “yes” according to the Federal Circuit in Uniloc 2017 v. Hulu, No. 2019-1686 (Fed. Cir. July 22, 2020).

In Uniloc 2017, the petitioners challenged the patent owner’s claims as anticipated and obvious. The patent owner defended the claims and also filed a contingent motion to amend requesting that, in the event certain claims were found unpatentable, the PTAB issue substitute claims pursuant to section 316(d). The petitioners opposed the motion to amend, arguing that the proposed substitute claims were directed to patent ineligible subject matter.