While the Board recognizes that its rules do not require petitioners to take “positions consistent with related cases in different fora,” a recent IPR decision illustrates the risks a petitioner faces when it advances claim construction positions before the Board that are inconsistent with its positions in related district court proceedings.
One strategy that a patent owner can pursue in an IPR trial is to file a motion to amend seeking to replace one or more of the challenged claims with substitute claims that neither enlarge the scope of the claims nor introduce new subject matter. When a patent owner files such a motion, the petitioner is permitted to oppose the motion and argue why the substitute claims are not patentable. In a recent decision, the Board reaffirmed that the grounds available for a petitioner to attack the patentability of substitute claims are not limited to anticipation or obviousness, but rather can include other sections under the Patent Statute, including § 101.
Collateral estoppel, or issue preclusion, is the legal doctrine that bars a litigant from re-litigating in subsequent litigations an issue that it lost in an earlier litigation. The doctrine had been applied in the administrative context previously, and in Maxlinear, Inc. v. CF Crespe, the Federal Circuit confirmed that it applies in IPR proceedings. In doing so, however, the court left the Board to resolve an interesting practical question as to how exactly collateral estoppel should apply on remand. Depending on how the Board resolves this practical issue, Maxlinear may provide petitioners a significant windfall as they will be able to challenge claims on the basis of prior art that they never cited to the Board.
Topics: IPR Estoppel
IPR proceedings are formal administrative adjudications subject to the procedural requirements of the Administrative Procedure Act (APA). One such requirement is that “[p]ersons entitled to notice of an agency hearing shall be timely informed of … the matters of fact and law asserted.” In Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2013), the Federal Circuit interpreted this to bar the PTAB from changing theories in the middle of an IPR trial without giving reasonable notice of and an opportunity for the parties to respond to the new theories. The court left unresolved, however, just how much notice and how much of an opportunity to respond the APA requires. A recent Federal Circuit decision gives some clues as to how the court will resolve those open questions.
Topics: Due Process
“Private property began the instant somebody had a mind of his own.” — E.E. Cummings
Among other rights, the Fifth Amendment guarantees that private property shall not “be taken for public use, without just compensation.” Both the Patent Act and the Supreme Court have classified patents as personal property. And in 2015, the Supreme Court made clear that the Takings Clause of the Fifth Amendment applies not only to real property but to “personal property” as well. Is the PTAB, then, by finding unpatentable more than 80% of claims instituted in an IPR proceeding, taking private property “without just compensation”? For four IP law professors, the answer is a resounding “yes.”
“When one door closes another door opens; but we so often look so long and so regretfully upon the closed door, that we do not see the ones which open for us.” — Alexander Graham Bell
The AIA prohibits the PTAB from instituting an IPR proceeding “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” How, then, did Apple recently convince the PTAB to institute an IPR proceeding against two patents it was indisputably served with a complaint alleging infringement of more than five years earlier?
Should the PTAB consider disclosures in an allegedly anticipatory reference that were identified for the first time during an oral hearing? No, according to the Federal Circuit, which ruled recently in a PTAB appeal that a patent owner was denied “notice and a fair opportunity to respond” in such a situation.
When Congress passed the AIA, inter partes review was heralded by many as offering accused infringers a powerful tool to invalidate patents asserted by non-practicing entities. While anecdotally it appears that this prediction was correct, a recent IPR petition filed by an NPE against Apple suggests that NPEs may be developing strategies for using IPRs offensively.
Does the PTAB have authority to institute a CBM proceeding on grounds that a petitioner did not raise? In the recent case of SightSound Technologies, LLC v. Apple Inc., the Federal Circuit said yes.
Apple petitioned for CBM review of two patents owned by SightSound. In its petitions, Apple identified two grounds for finding the claims unpatentable: (1) anticipation over a prior art computer system and (2) obviousness over a prior art article alone or in combination with certain other references.
In the much-anticipated first Board decision to address the merits of an IPR petition filed by the Coalition for Affordable Drugs and Kyle Bass, the Board yesterday denied institution in IPR2015-00720. The reason for the denial was simpler than some of the arguments advanced by the patent owner, and serves as a reminder to petitioners of their burden to demonstrate that relied upon references are prior art.
Topics: Kyle Bass