March 2, 2018Newsletter

This Week at the Board - March 2, 2018

PTAB Grants Patent Owner’s Request To File Sur-Reply

In Apple, Inc. v. California Institute of Technology, the Board granted Cal Tech’s request to file a sur-reply.  Cal Tech requested authorization to file a motion to strike certain new arguments raised in petitioner’s reply, or, in the alternative, to file a sur-reply.  Cal Tech argued that Apple’s replies included extensive new arguments and evidence, including testimony from a new declarant, and experimental data and simulations.  Apple acknowledged that it had not previously apprised Cal Tech of its intention to offer the declarant’s testimony, but maintained that all the arguments and evidence were responsive to Cal Tech’s Responses.  The Board did not authorize Cal Tech to file a motion to strike, stating that they would consider whether Apple’s reply contained evidence or arguments outside the scope of the Response.  Given the circumstances, the Board did grant Cal Tech’s request to file a sur-reply. The Board stated that the decision to authorize the sur-reply “is heavily influenced by the fact that petitioner’s replies are accompanied by and cite extensively to the testimony of a new declarant.”

A link to the decision is found here.


PTAB Says Tribal Immunity Does Not Shield Patent Owners From IPR

In Mylan Pharmaceuticals, Inc. v. Saint Regis Mohawk Tribe, the Board ruled that tribal immunity did not apply to IPRs and denied the Mohawk Tribe’s motion to dismiss.  The Board had instituted an IPR filed by Mylan against patents owned by Allergan Inc., and joined Teva Pharmaceuticals and Akron Inc. as parties.  Shortly before the oral hearing, the Board was informed that the Mohawk Tribe had acquired the challenged patents from Allergan, who maintained a full license of the patents.  The Board suspended the hearings and allowed the Mohawk Tribe to file a motion to terminate the IPR.  While Indian tribes are domestic dependent nations that exercise inherent sovereign authority, the Board found that there was no statutory basis to assert a triable immunity defense in an IPR proceeding.  The Board noted that the Supreme Court has found that, “general Acts of Congress apply to Indians . . . in the absence of a clear expression to the contrary.”  With IPRs, Congress enacted a statute providing that any patent (regardless of ownership) is “subject to the conditions and requirements of [the Patent Act].”  The Board found that only limited exceptions apply to a generally applicable federal statue, and that none of those exceptions apply to IPRs, which do not interfere with the Tribe’s “exclusive rights of self-governance in purely intramural matters.”  There was no possibility of monetary damages or injunction against the tribe, as the scope of IPRs is limited to assessing the patentability of the challenged claims.  The Board also held that even if the Mohawk Tribe was entitled to sovereign immunity, the tribe is not an indispensable party and the IPR could proceed with the participation of Allergan.

A link to the decision is found here.


Fed. Cir. Overturns PTAB’s Reversal Of Examiner’s Reexamination Decision Based On Improperly Construed Claim Term

In Hayward Industries, Inc. v. Pentair Water Pool and Spa, Inc., the Federal Circuit overruled the PTAB’s claim construction in an inter partes reexamination of U.S. Patent No. 7,686,57, which is directed to a pool pump.  On appeal, the parties disagreed on whether the term “drive” was properly limited to a variable speed drive for a motor.  In the reexamination, the Board recognized that the claims did not specifically recite a variable speed drive, but limited the term based on its finding that the “’587 patent, as a whole, contextually discloses a variable speed motor and associated drive.”  The Fed. Cir., however, found that the board committed the “classic mistake of reading limitations from the specification into the claims.”  According to the Fed. Cir., the ’587 patent only described variable speed drives in two instances, and both of the descriptions supported the broader interpretation of drive, while nothing in the specification suggested that “the controller must act as a variable speed drive.”  Pentair also added a dependent claim during reexamination specific to a variable speed drive, supporting the broader interpretation of drive under claim differentiation. Based on this interpretation, the Fed. Cir. agreed with Hayward that the Examiner’s rejections of certain claims in the reexamination should be maintained.

A link to the decision is found here.


Board Dismisses Claims From IPR Sua Sponte

In Apple Inc. v. Personalized Media Communications LLC, the Board dismissed a subset of claims from an IPR sua sponte, without requiring a motion to dismiss.  The Board noted that the claims had previously been found unpatentable in a separate IPR, and that during oral hearing both parties agreed that the subset of claims should be dismissed.  

A link to the decision is found here.


California Court Stays Proceeding For IPR Based On Stipulation By Defendant

In Blacoh Fluid Controls, Inc. v. Syrinix, Inc., the U.S. District Court for the Northern District of California granted the defendant’s motion for a stay pending the filing of IPR petitions to attack the validity of the plaintiff’s patents.  The District Court weighed three factors (stage of litigation, simplification of issues, and undue prejudice and tactical disadvantage), finding that the first factor was neutral for the parties, and that the second and third factors weighed in favor of a stay.  Regarding the third factor, the plaintiff argued that the filing of the inter partes reviews would cause undue delay.  The District Court, however, noted that any such prejudice was mitigated by the defendant’s stipulation that it would waive its prior art arguments before the District Court regardless of whether the inter partes reviews were instituted.      

A link to the decision is found here.


Board Partially Upholds Invalidity On Remand

In Alliance of Rare-Earth Permanent Magnet Industry v. Hitachi Metals, Inc., the Board issued a decision on remand from the Federal Circuit.  In the underlying IPR, the Board had issued a final written decision in favor of the petitioner.  The patent owner appealed to the Federal Circuit.  The Federal Circuit reversed the Board’s claim construction with respect to two of the claims, and remanded.  Upon remand, the Board found that under the new claim construction established by the Federal Circuit the petitioner had still proven that one of the claims was unpatentable, but had not proven the other claim to be unpatentable.     

A link to the decision is found here.

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