The Post-Grant Strategist

The March 2019 decision from the PTAB’s Precedential Opinion Panel (“POP”) in Proppant Express Investments v. Oren Technologies held that petitioners can in some situations join issues to their pending IPRs by filing another petition, even after the one-year time bar would normally bar the petitioner from requesting IPR. But the Federal Circuit recently reversed course in Facebook v. Windy City Innovations, limiting petitioners’ options to avoid the one-year time bar.

Before Windy City, the POP’s decision in Proppant opened the door for so-called same-party joinder of new issues. The POP explained that 35 U.S.C. § 315(c) permits the PTAB to join “any person who properly files a petition” that warrants institution of an IPR. The POP found that “any person” includes the prior petitioner in an already-pending IPR. The POP also found that nothing in section 315(c) prohibits joining new issues to existing proceedings.

Prosecution history can be a minefield in patent cases, and IPR is no different. In the context of construing patent claims, much of the focus is often on whether the patent owner disclaimed particular subject matter from the scope of the claims. But two recent Federal Circuit decisions reviewing decisions in IPR illustrate that even absent disclaimer, patent owners may be able to save the challenged claims by pointing to their past statements during prosecution.

Patent claims that could be indefinite have long raised tricky issues for parties in IPR.  Should petitioners challenge in IPR claims they think are indefinite? What should the PTAB do if it concludes that the claims are indefinite? The Federal Circuit’s recent decision in Samsung Electronics Co. v. Prisua Engineering Corp. provides some answers.

The key questions addressed in the case were, first, whether the PTAB may cancel claims for indefiniteness once IPR has been instituted on another grounds, such as anticipation under section 102 and obviousness under section 103. And second, whether the PTAB is strictly precluded from making anticipation and obviousness determinations on indefinite claims.

That is the gist of a recent decision by the court, which permitted an IPR Petitioner to use “general knowledge” to fill in missing claim limitations in certain circumstances, but also constrained the PTAB as to what grounds may serve as the basis for instituting trial.

Petitioners seeking IPR of a patent must make their case for unpatentability based on two types of prior art – patents and printed publications. However, in Koninklijke Philips N.V. v. Google LLC (No. 2019-1177), the Federal Circuit held that those references can be used as evidence of the general knowledge, and need not be made part of a specific combination. Specifically, the court found that the Petitioner had properly alleged that although the primary reference relied upon did not disclose each and every element of the claimed invention, the differences between the claimed invention and that reference would have been obvious to a skilled person based on their general knowledge.

(Co-authored by Stuart Duncan Smith)

The Supreme Court heard oral arguments in Thryv v. Click-to-Call Technologies last month. As we previously discussed, the case concerns whether the PTAB’s finding that a petition for IPR was timely filed is reviewable on appeal. If the Justices’ questions at oral arguments are any indication, a split decision is likely.

At issue in the case is Section 314(d) of the Patent Act, which bars appeal of the PTAB’s decision “to institute an inter partes review under this section.” The Justices must decide whether that statute applies to, and thus bars appeal of, the PTAB’s finding that the petitioner timely filed the petition before the end of Section 315(b)’s one-year window.

(Co-authored by Stuart Duncan Smith)

Too often some challenger in IPR declines to use non-patent literature (or “NPL”), such as academic and trade journal articles, because of the effort and risk associated with establishing that the NPL is prior art. The Federal Circuit’s recent decision in Telefonaktiebolaget LM Ericsson V. TCL Corp. (No. 17-2381) illustrates why that strategy can be a mistake and provides guidance on how to use NPL effectively.

As we have discussed, the PTAB often imposes specific requirements for establishing that an NPL reference is a prior art printed publication. Unlike with patent prior art, where challengers can ordinarily rely on the dates on the document itself, challengers typically have to introduce evidence that NPL was publicly accessible early enough to make it prior art. Getting that evidence can be challenging, which is why some challengers shy away from using NPL at all.

(Co-authored by Stuart Duncan Smith)

In the past, moving to amend the challenged claims during IPR was largely futile. The PTAB denied nearly all motions to amend, and many patent owners that might have benefited from amendment chose not to pursue it. But the rules concerning amendment in IPR are changing, and the number and success rate of motions to amend are ticking up. Patent owners have new reasons to think that amendment might save their patents from IPR.

Challengers in post-grant proceedings like IPR may not reassert invalidity arguments in court that they “raised or reasonably could have raised” before the PTAB. Several recent cases illustrate that whether a particular invalidity argument “reasonably could have [been] raised” is a fact-intensive question that the parties must be prepared to address. These cases also show that both patent owners and challengers should develop a factual record relating to whether estoppel applies to a given invalidity theory.

(Co-authored by Stuart Duncan Smith)

The statute that created inter partes review (IPR) defines certain situations when IPR is not available. For example, IPR is not available if the petitioner was served with a complaint alleging infringement of the challenged patent more than a year earlier. But if the PTAB institutes an IPR that the statute does not permit, does the patent owner have any way to challenge that institution decision? The obvious answer might seem to be appealing the institution decision to the Federal Circuit Court of Appeals, but the same statute also says the PTAB’s institution decision is “final and nonappealable.” Next month in Thryv, Inc. v. Click-to-Call, the Supreme Court will consider whether patent owners can ask the Federal Circuit to keep IPR within its statutory confines.

Judicial estoppel is an equitable doctrine that precludes a party from taking a position in one proceeding that is inconsistent with a position the party took in a previous proceeding. It can be used as a defensive strategy in an inter partes review, for example, when the patent owner identifies that the petitioner is advancing an argument in its petition that is inconsistent with a position the petitioner took in some other proceeding. However, four recent IPRs, exemplified by IPR2018-00291, highlight that meeting the standard for judicial estoppel is no easy task.