Uniloc “Locking” LG & Facebook Out? Not So Fast. CAFC Upholds Board’s “No Estoppel” Finding in Uniloc 2017 LLC v. Facebook Inc.

Posted by Alexandra Kim on May 12, 2021

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.


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.

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Topics: Petitioners, Patent Owners, "Federal Circuit", Joinder

Printed Publications and Search Functionality – The Federal Circuit Weighs In

Posted by Susmita Gadre on May 3, 2021

Susmita Gadre

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.

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Topics: Patent Owners, Printed Publications, "Federal Circuit", Search Functionality

The One-Year Time Bar Strikes Again

Posted by Stuart Duncan Smith on Apr 8, 2021

Stuart Duncan Smith

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.

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Topics: Petitioners, Patent Owners, "Federal Circuit", IPR, PTAB

The Federal Circuit Slams the Door Closed On Same-Party Joinder

Posted by Kevin Mosier on Apr 1, 2020

Kevin Mosier

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.

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Topics: Patent Owners, "Federal Circuit", POP

Using Prosecution History in IPR: What You Say May Come Back to Help You

Posted by Stuart Duncan Smith on Mar 19, 2020

Stuart Duncan Smith

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.

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Topics: Patent Owners, "Federal Circuit", PTAB

Continued Uncertainty About Estoppel Highlights the Importance of Preparing Carefully

Posted by Anant Saraswat on Nov 19, 2019

Anant Saraswat

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.

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Topics: Patent Owners, IPR, PTAB

Isn’t it Obvious to Optimize for Better Results?

Posted by Joshua Brandt on Apr 23, 2019

Joshua Brandt

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.

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Topics: Patent Owners, IPR, PTAB

All or Nothing: PTAB Must Institute IPR on All Challenged Claims and Grounds, or None at All

Posted by Kevin Mosier on Jan 29, 2019

Kevin Mosier

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.

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Topics: Patent Owners, IPR, PTAB

Non-Prior Art Evidence of the Prior Art? The Federal Circuit Says It May be Okay

Posted by Stuart Duncan Smith on Oct 29, 2018

Stuart Duncan Smith

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.

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Topics: Patent Owners

Who Bears the Burden in IPR? It Depends on the Argument

Posted by Stuart Duncan Smith on Oct 23, 2018

Stuart Duncan Smith

A hallmark of IPR proceedings is that the petitioner—not the patent owner—has the burden to prove that the challenged claims are unpatentable. This hallmark is statutory as section 316(e) of the American Invents Act (which created IPRs) provides that “the petitioner shall have the burden of proving a proposition of unpatentability.” And yet, a recent decision from the Federal Circuit confirms IPR nonetheless applies the traditional rule that can shift a burden to the patent owner to rebut the petitioner’s prima facie case of obviousness. Patent owners thus cannot blindly rely upon section 316(e) and, in certain circumstances, should consider submitting evidence to defend the claims.

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Topics: Petitioners, Patent Owners

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.