March 16, 2018Newsletter

This Week at the Board - March 16, 2018

District Court Finds That Estoppel Applies Only To Specific Grounds And Not To Entire Statutory Provisions

In Solutran, Inc. v. US Bancorp et al., the District Court of Minnesota held that CBM estoppel does not apply to entire statutory provisions such as 35 U.S.C. §101, §102, or §103.  Rather, it applies only to specific grounds.  In 2014 U.S. Bank petitioned for CBM review of Solutran’s patent, asserting that the patent was invalid under both 35 U.S.C. §101 and 35 U.S.C. §103.  The PTAB instituted the CBM based only on the 35 U.S.C. §103 ground.  At the District Court Solutran argued that U.S. Bank should be estopped from raising any 35 U.S.C. §103 arguments, since U.S. Bank had already raised a 35 U.S.C. §103 ground during its CBM review.  The District Court disagreed, noting that the Federal Circuit’s recent decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016) makes it clear that estoppel does not apply to statutory grounds of a challenge in general, but rather to discrete grounds based on particular prior art or a combination of prior art.  For example, in Shaw, multiple 35 U.S.C. §103 grounds were raised.  The PTAB instituted on some of the grounds, but not on others.  If estoppel applied to bar all 35 U.S.C. §103 claims once the PTAB had considered any claims based on 35 U.S.C. §103, then the grounds not instituted in Shaw would have been estopped.  Yet, the Federal Circuit held that such grounds were not estopped.  Thus, the term “ground” cannot be held to encompass an entire statutory provision as Solutran argued.  

A link to the decision is found here.


Board Grants Motion For Extension Of Time To File Patent Owner Preliminary Response

In IPR2018-00273, the Board granted a patent owner’s request for an extension of time to submit its preliminary response.  The patent owner had asserted that it was not served properly, and that it only became aware of the IPR when the Board contacted the patent owner’s counsel about a failure to file a mandatory notice.  The Board found that the petitioner had properly served the petition based on the address of record, but that the attorney at that address was no longer the representative for the patent owner and thus the patent owner had only recently become aware of the IPR.  Thus, under the particular facts of the case, the Board concluded that good cause supported a limited extension of the preliminary response deadline, and the Board granted the request. 

A link to the decision is found here.


Board Denies Motion For Extension Of Time To File Patent Owner Preliminary Response

In IPR2018-00445, the Board denied the patent owner’s request for an extension of time to submit its preliminary response.  The patent owner had asserted that it was named as a party in thirteen petitions for IPR that were filed on the same day, and that it needed additional time to analyze the petitions and prepare preliminary responses.  The patent owner also noted that its lead counsel was currently scheduled to be in trial in another matter shortly.  The Board found that these reasons did not arise to a showing of good cause.  For this reason, the Board denied the request.  

A link to the decision is found here.


Board Vacates Institution And Dismisses Petition For Failure To Name Parties

In IPR2016-01656, the Board vacated the institution decision and dismissed petitioner I.M.L. SLU’s petition on the grounds that the petitioner did not identify all of the real parties-in-interest.  The patent owner, Wag Acquisition, LLC, requested discovery to determine if the entity CoolVision, who had been served with patent owner’s infringement suit more than one year before the filing date of the petition, was a party-in-interest that would bar the petition under 35 U.S.C. § 315(b).  The petitioner resisted discovery, and tried to withdrawal the petition.  The Board noted that the statute and the Board’s rules do not provide for withdrawing a petition, and that the appropriate ruling would be adverse judgment.  The Board issued an order for the petitioner to file for adverse judgment or answer discovery requests relating to their relationship with CoolVision.  The petitioner did not answer the discovery requests and filed a Motion for Adverse Judgment.  The patent owner opposed the petitioner’s motion on the grounds that the petition was fatally flawed because the petitioner did not name all the real parties-in-interest, in particular CoolVision, which would bar the petition.  The Board determined that the patent owner raised sufficient evidence based on the publically documented relationship between the petitioner and CoolVision to show significant issues as to whether the petitioner identified all real parties-in-interest.  Because the petitioner failed to rebut the evidence or clarify their relationship with CoolVision, the Board determined that the petitioner failed to meet its burden to establish that it complied with the statutory requirement to identify all the real parties-in-interest.  The Board terminated the proceeding and dismissed the petition.

A link to the decision is found here.


Board Clarifies Rejection On Remand Relying Solely On The Record

In IPR2014-01558, on remand, the Board found claims of the patent at issue not unpatentable under 35 U.S.C. §103(a).  Emerachem filed an appeal of the Board’s final decision, and the Federal Circuit affirmed the decision in part, vacated in part, and remanded the proceeding to the Board for clarification.  The issue on remand was the clarification of the Board’s decision on claims 3, 16, and 20.  While the Board considered conducting a new trial on these claims, or allowing supplemental briefing, it decided that these approaches would stray from the direct instructions of the Federal Circuit.  The Board stated that “proceeding on the existing record and briefing may not address all of the potential issues” but that “it hews most truly to the instructions of our reviewing Court.”  Considering the record as it stood, the Board found that “the petition does not establish that [the publication] describes the dependent limitations of claims 3, 16, and 20” and that  therefore “the Petitioner did not carry its burden of proof as regards claims 3, 16, and 20 in the instant proceeding."

A link to the decision is found here.

back to top