October 25, 2016Newsletter

This Week at the Board - October 25, 2016

PTAB Denies Request for Adverse Judgment Based on Conditional Language

In IPR2016-00381 and IPR2016-00382, the PTAB denied the Patent Owner’s request for an entry of adverse judgment, but granted the Patent Owner leave to refile.

In its request, the Patent Owner informed the Board that the patent at issue was the subject of an ex parte reexamination proceeding in which a specific claim had been rejected. The Patent Owner asked the board to cancel that claim and enter adverse judgment against it “without prejudice to its ability to proceed with the ex parte reexamination of the patents, including continuing prosecution of the claims currently pending there.”  The language conditioned the request on the adverse judgment being without prejudice to claims not at issue in the proceeding. Consequently, the Board—noting it could not make a determination regarding claims not involved in the specific IPR—denied the request, but granted the Patent Owner leave to refile the request without the conditional language.

A link to the PTAB’s decisions are here and here.


PTAB Institutes Review Despite Denying Earlier Challenge to the Same Patent

In IPR2016-00800, the PTAB granted institution of inter partes review despite having denied Petitioner’s earlier challenge of the same patent. 

Based on the Board’s earlier denial, the Patent Owner suggested the Board decline to institute trial in the instant case. The Board rejected this suggestion. 35 U.S.C. § 325(d) permits the Board to take into account whether “the same or substantially the same prior art or arguments previously were presented to the Office.” Denial under § 325(d) is at the Board’s discretion. In exercising its discretion, the board considered multiple factors, including: (1) the facts of each case; (2) the burden on the parties and the Board; and (3) the public interest.

In consideration of those factors, the Board noted it had instituted inter partes review on similar grounds for similar claims in a related proceeding between the same parties. Because the parties and the Board were already committed to review and because the parties were also involved in district court litigation, the Board concluded it would be inefficient for it to decide the issues in one matter and the district court to decide similar issues in another. Thus, the Board instituted review.

A link to the PTAB’s decision is provided here.


Federal Circuit Holds PTAB Decision Unappealable

In Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., the Federal Circuit reaffirmed its earlier order in GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (Fed. Cir. 2015), holding the PTAB’s vacature of its institution decision and termination of the proceedings constitute decisions whether to institute inter partes review and, thus, are “final and nonappealable” under 35 U.S.C. § 314(d).

In Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), the Supreme Court held that § 314(d) bars review in cases that “consist[s] of questions that are closely tied” or “closely related” to “the application and interpretation of statutes related to the Board’s decision to initiate review.” Id. at 2141–42. Applying Cuozzo, the Federal Circuit concluded that the Board’s reconsideration was a decision whether to institute proceedings and, thus, barred by § 314(d).

This case is one more in a growing line of cases holding the same. See Husky Injection Molding Sys. Ltd. Athena Automation Ltd., No. 15-1726, 2016 U.S. App. LEXIS 17373, at *6 (Fed. Cir. Sept. 23, 2016); Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944, 2016 U.S. App. LEXIS 16942, at *4 (Fed. Cir. Sept. 16, 2016).

A link to the Federal Circuit’s opinion is provided here.

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