August 18, 2017Newsletter

This Week at the Board - August 18, 2017

U.S. International Trade Commission Declines to Suspend or Temporarily Rescind Limited Exclusion Order Despite Final Written Decision Finding Claims Unpatentable at PTAB

The U.S. International Trade Commission recently was asked to suspend or temporarily rescind a limited exclusion order, based on a final written decision at the PTAB in which claims of the underlying infringed patents had been found unpatentable. The Commission denied the request, finding that the PTAB’s final written decision did “not constitute a changed circumstance such that the remedial orders should be rescinded.” The Commission noted that the legal status of the claims at issue will not change unless and “until the USPTO actually issues a certificate canceling the claims following exhaustion of all appeals.”

A link to the decision is found here.

Federal Circuit Affirms Unpatentability of Podcast Patent Challenged by Non-Profit Organization

The Federal Circuit recently reviewed a PTAB final written decision invalidating claims of a podcast patent owned by Personal Audio, LLC. The patent had been challenged by Electronic Frontier Foundation, a non-profit organization that advocates in the public interest of consumers of digital technology. During the review, the Federal Circuit asked the parties to brief the question of whether Electronic Frontier Foundation had Article III standing to participate in view of Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir. 2014). In its decision, the Federal Circuit noted that in this case, the party seeking judicial review was Personal Audio, not Electronic Frontier Foundation, and that it was clear that Personal Audio had legal standing because of the loss of tangible legal rights in its patent. The Federal Circuit further noted that Electronic Frontier Foundation was not constitutionally excluded from appearing in court to defend the PTAB decision in its favor. The Federal Circuit went on to affirm the PTAB’s conclusion that the challenged claims were anticipated or alternatively were obvious in view of the references relied upon during the underlying IPR.

A link to the decision is found here.

Federal Circuit Finds That PTAB Failed to Properly Construe Claim Term

The Federal Circuit recently reviewed a PTAB final written decision that found that Homeland Housewares, LLC had failed to show, by a preponderance of the evidence, that any claim of a Whirlpool Corporations patent was anticipated. In the final written decision, the PTAB had declined to provide a claim construction for the term “a predetermined settling speed.” Upon appeal at the Federal Circuit, the Federal Circuit reviewed this claim term de novo, and considered the constructions offered by the parties. Whirlpool proposed that the term meant “a speed, greater than zero, that indicates that items have settled around the cutter assembly.” Whirlpool acknowledged that empirical testing would be required to establish the speed. The Federal Circuit rejected this construction, concluding that a construction that would require empirical testing is incorrect. The Federal Circuit noted, for example, that the plain meaning of “predetermined” is to determine beforehand. Thus, empirical testing should not be required. Homeland Housewares proposed that the term meant “any comparative low speed less than the operating speed.” The Federal Circuit also rejected this construction, noting that not every lowering in speed will cause settling. The Federal Circuit instead construed the term to mean “a speed that is slower than the operating speed and permits settling of the blender contents.” Based on this construction, the Federal Circuit found that the Board had erred in finding that Figure 25 of the prior art reference relied upon in the IPR did not anticipate the claims.

A link to the decision is found here.

PTAB Grants Joinder Despite Different Claims Being Challenged

The PTAB recently granted a motion for joinder of a petition filed by Facebook, Inc. against Windy City Innovations, LLC. The PTAB noted that the motion met the requirements of 37 C.F.R. §42.122(b) because the motion was filed no later than one month after a prior IPR was instituted. The Board noted that although motions for joinder are frequently granted for cases where the asserted grounds and supporting arguments / evidence are the same as in the prior IPR, that this case was different because Facebook was challenging different claims than in the prior IPR. Facebook argued, however, that the challenged claims were substantially similar to the claims challenged in the prior IPR and thus did not raise any substantial new issues. Despite Windy City’s arguments, the Board ultimately sided with Facebook. Windy City also argued that Facebook was “on notice” of the present challenged claims before it filed the prior IPR and thus those claims should have been challenged in the prior IPR. The Board noted that while an unreasonable delay in raising an unpatentability challenge is often a sufficient basis to deny joinder, that in this case the delay was not unreasonable because the district court complaint did not identify any specific claims, and that Facebook had attempted multiple times to determine which claims of the patent were actually the subject of Windy City’s infringement allegations.

A link to the decision is found here.

Northern District of Illinois Finds That PTAB Dicta Does Not Create Grounds for Estoppel

The Northern District of Illinois recently reviewed whether a PTAB institution of IPR on a ground of obviousness based on a combination of two prior art references barred, or estopped, the defendant from later asserting obviousness based on those references individually. Specifically, the defendant had previously filed a petition for IPR with three grounds of invalidity: (1) obviousness in light of Hughes; (2) obviousness in light of Pattengill; and (3) obviousness in light of Hughes combined with Pattengill. The PTAB instituted the IPR only on the third ground. In the final written decision, the Board noted that the second ground (i.e., obviousness based on Pattengill alone) was presented in the petition but was not instituted, and that “to the extent that Petitioner’s arguments are directed to obviousness in view of Pattengill alone, they are not properly part of this proceeding.” The PTAB also noted, in dicta, that even if they were to consider Pattengill alone, they did not believe that Pattengill rendered the claims obvious. In reviewing for possible estoppel, the Northern District focused on the fact that the Board explicitly mentioned that the third ground was the only ground properly part of the IPR, and that therefore only the third ground should give rise to estoppel. The court acknowledged the dicta noted above, but felt that it was clear from the record that only the third ground was actually part of the IPR, and therefore the defendant could still rely on the first two grounds of invalidity in the district court. The court also went on to note that the obviousness analysis based on a combination of references does not necessarily overlap with the obviousness analysis for a reference taken individually, and that therefore even though the first two grounds might be considered subsets of the third ground (a finding that has previously triggered estoppel in other district court cases), that estoppel should not apply.

A link to the decision is found here.

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