Section 315(e)(2) states that once a final decision issues in an IPR challenging a claim, the Petitioner “may not assert either in [court or the ITC] that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” In California Institute of Technology v. Broadcom Ltd., Nos. 2020-2222, 2021-1527, the Federal Circuit clarified the scope of statutory estoppel, making it harder for some patent challengers to preserve invalidity arguments for litigation.
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.
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.
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.
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.
Just because your issued patent was examined by the USPTO does not mean that it is free from challenge. Your competitors may, of course, scrutinize your patent and use IPR to challenge its validity—potentially turning your patent shield into a roadmap to their next product. This was the case in a recent IPR.
This past year, the Supreme Court in SAS Institute v. Iancu held that once the PTAB institutes an IPR trial its subsequent final written decision must address all claims challenged in the petition. The Court explained that its holding was compelled by a plain reading of 35 U.S.C. § 318(a), which states that the PTAB must issue a final written decision on “any patent claim challenged by the petitioner.” SAS Institute did not decide, however, whether the PTAB’s final written decisions must also address all grounds raised in a petition. The Federal Circuit has subsequently provided a clearer answer.
Section 311(b) of the American Invents Act (“AIA”) provides that a petitioner may request cancellation of one or more claims of a patent “only on a ground that could be raised under section 102 and 103 and only on the basis of prior art consisting of patents or printed publications.” In light of this clear restriction on the evidence that can lead to the cancellation of a claim, one might reasonably assume that all of the petitioner’s evidence during that trial must be prior art. A recent decision from the Federal Circuit, however, shows that this assumption is not entirely correct. Rather, in some situations, the cancellation of a claim may turn on evidence that is not even prior art to the claim.
Topics: Patent Owners