On April 15, 2021, the United States Patent and Trademark Office (“USPTO”) implemented the COVID-19 Prioritized Examination Pilot Program (“Pilot Program”) to fast-track ex parte appeals of products or processes subject to an applicable FDA approval for COVID-19 use.

Generally, appeals to the Patent Trial and Appeal Board (PTAB) are taken up for decision in the order they are docketed, with an average of 13 months from the time the PTAB receives the appeal to the date of the final decision.

For qualifying appeals, the PTAB has set a target of issuing a decision on the merits of the appeal within six months from the date that a petition for fast-track review is granted.  Appellants can expect a decision on their petition for fast-track status in approximately two business days.

To qualify for fast-track status under the Pilot Program, appellants must meet the following three conditions:

  1. The application must be an original utility, design, or plant non-provisional application claiming a product or process subject to an applicable FDA approval for COVID-19 use;
  2. The appeal must be an ex parte appeal for which a notice of appeal has been filed and a PTAB docketing notice has been issued by the USPTO (i.e., the appeal is pending before the PTAB); and
  3. The appellant must file a petition under 37 C.F.R. § 41.3 and certify that the application involved in the appeal claims products or processes that are subject to an applicable FDA approval for COVID-19 use.

The USPTO is offering the Pilot Program on a temporary basis and will accept petitions for fast-track review until 500 appeals have been accepted into the Pilot Program.

Hearings in ex parte appeals under the Pilot Program will be conducted according to ordinary PTAB hearing procedures.

Currently, the PTAB is conducting hearings by telephone only, until further notice.

In In re: Board of Trustees of the Leland Stanford Junior University (“Stanford”), No. 2020-1012 (Fed. Cir. Mar. 11, 2021), the Federal Circuit was presented another opportunity to analyze patent-eligible subject matter.  In affirming the § 101 rejection of the claims, the court held the mathematical calculations and statistical modeling improvements to determinations of haplotype phase were not sufficient to make the claims patent eligible.

In 2012, Stanford filed Application No. 13/445,925 (“the ’925 application”) directed to methods and computing systems for determining haplotype phase, a process for determining the parental source of an inherited gene.  The invention uses calculations and statistical modeling of large amounts of genetic data to determine haplotype phase.  The methods purportedly improved the number of haplotype phase predictions over those in the prior art by incorporating additional data, such as “linkage disequilibrium data” and “transition probability data.”  According to Stanford, improved haplotype phasing techniques have the potential to revolutionize personalized health care.  The Patent Trial and Appeal Board rejected the claims as covering patent ineligible abstract mathematical algorithms and mental processes and Stanford appealed.

The Federal Circuit held that the ’925 application did not contain patent eligible claims under the Alice framework.  Stanford argued that the specific application of the steps was novel and enabled accurate haplotype phasing at 97.9% of all heterozygous positions, whereas the previous methods only achieved approximately 80%.

The court noted that, even accepting the improvements as true, current legal precedent would not protect the claims no matter how groundbreaking the advance.  The court held that: (1) the claims were directed to ineligible mathematical algorithms; (2) the claims were not transformed into an eligible form by any specialized computer memory or hardware, whether the elements were taken individually or in combination; and (3) without more, the improvements in the mathematical analysis itself was an insufficient innovation to warrant patent protection.

Earlier this month, in the precedential decision Uniloc 2017 LLC v. Facebook Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) upheld the Patent Trial and Appeal Board (“the Board”) on the issue of estoppel (or lack thereof) when multiple parties file multiple, substantially similar petitions challenging a patent’s patentability.

1) The Proceedings Before the Board

The prosecution history is tangled:

First, in November 2016, Apple filed a petition for inter parties review (IPR) of U.S. Patent No. 8,995,433 (“the ’433 patent”) assigned to Uniloc, challenging claims 1-6 and 8.

Second, in May and June 2017, Facebook filed two petitions (“Facebook’s ’1427 and ’1428 petitions”) for inter partes review of the ’433 patent. The ’1428 petition was substantially identical to the Apple IPR, and was filed along with a motion to join Apple’s IPR. The ’1427 petition challenged claims 1-8 of the ’433 patent on new grounds.

Third, in September 2017, LG filed IPR petitions substantially identical to Facebook’s ’1427 and ’1428 petitions, along with a motion to join Facebook’s ’1427 and ’1428 petitions.

Fourth, in October 2017, the Board instituted Apple’s IPR and granted Facebook’s motion to join Apple’s IPR. Then, a few months later, the Board instituted Facebook’s ’1427 and ’1428 petitions. Additionally, the Board instituted IPRs based on LG’s petitions and granted LG’s motion to join Facebook’s ’1427 and ’1428 petitions. At this point, Facebook was party to its own ’1427 and ’1428 petitions and Apple’s IPR challenging claims of the ’433 patent, and LG was party to Facebook’s ’1427 and ’1428 petitions.

Fifth, in May 2018, the Board issued a final written decision in the Apple IPR upholding the patentability of all challenged claims. Later that month, the Board dismissed Facebook in part from the ’1427 petition (with respect to all but claim 7), finding Facebook estopped from maintaining the proceeding with respect to the claims that had been challenged (and upheld) in the Apple IPR. However, LG was not similarly estopped.

Finally, in the Board’s final written decision in the consolidated IPRs for Facebook’s ’1427 and ’1428 petitions, the Board found all challenged claims unpatentable. Uniloc sought rehearing, which was denied. Uniloc then appealed on several grounds, including that 1) the Board erred in not finding LG estopped from challenging claims 1-8 of the ’433 patent and 2) in finding Facebook not estopped from challenging claim 7 of the ’433 patent.

2) Whether the Board Could Review Uniloc’s Estoppel Arguments

On appeal, the CAFC first addressed whether it could review Uniloc’s estoppel argument. Uniloc contended that because Facebook was estopped by the Apple IPR decision from maintaining a challenge to those claims, LG (by virtue of having joined Facebook, who had joined Apple) was an alleged “real party in interest [RPI] or privy of the petitioner” and should have been estopped as Facebook was. This argument was legally complicated because while 35 U.S.C. § 314(d) dictates that the “determination by the Director [of the Patent Office] whether to institute an inter partes review under this section shall be final and nonappealable,” the CAFC’s case history was mixed when it came to reviewability.

The CAFC ultimately found that it was not precluded from reviewing the Board’s decision, citing to the “strong presumption of reviewability of agency action” and its holding in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017). “Critically, the particular circumstances in Credit Acceptance, i.e., one in which no cause for termination at the time of petition existed and the basis for termination developed while the proceeding was ongoing, is exactly that which happened here.” (Emphasis added).

3) Affirmance of Finding that LG Not Estopped from Challenging Claims 1-8 of the ’433 Patent – Serial Joinder Doesn’t Require Finding of Real Party in Interest or Privity

 On the merits regarding whether LG was estopped from challenging claims 1-8 of the ’433 patent on the same grounds that Apple and Facebook had, the CAFC stated that the determinations as to whether a party is a real party in interest or in privity with another are highly fact-dependent. Regarding real party in interest, the test includes “whether a []party exercises [or could exercise] control over a petitioner’s participation in a proceeding, or whether a []party is funding the proceeding or directing the proceeding.” Regarding privity, “it is important to determine whether the petitioner and the prior litigant’s relationship . . . is sufficiently close that it can be fairly said that the petitioner [already] had a fully and fair opportunity to litigation the issues it now seeks to assert.”

The CAFC agreed with the Board that the evidence did not establish “control” for the real party in interest analysis. “[J]ust because LG expressed an interest in challenging the ’433 patent’s patentability . . . does not by itself make LG an RPI to Facebook’s IPR.” Additionally, the CAFC found the record insufficient to establish any sort of “preexisting, established relationship” that would indicate “coordination.” “The mere fact that the Board procedurally required LG and Facebook to consolidate their arguments and evidence in combined filings in this proceeding does not, without more, make them privies . . .”

4) Affirmance of Finding that Facebook Not Estopped from Challenging Dependent Claim 7 of the ’433 Patent, Notwithstanding Estoppel With Respect to Independent Claim 1

Similarly, the Board found that Facebook was not estopped from challenging claim 7 of the ’433 patent. Uniloc asserted that because the Board found Facebook estopped from challenging claims 1-6 and 8, the estoppel should apply to claim 7 because claim 7 depends on claim 1. The CAFC disagreed with Uniloc, finding the plain language of the statute rebutted an estoppel argument.

The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a) . . . may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. 35 U.S.C. § 315(e)(1)(emphasis added).

The CAFC also found its case law on the issue supported the Board’s decision, and found against Uniloc.

5) Conclusion

Uniloc also challenged the obviousness determinations, but the CAFC affirmed the Board, finding the decision supported by substantial evidence. The CAFC’s review of the Board’s institution decision, despite an occasionally confusing case history, may indicate an increased likelihood of reviewing estoppel-related decisions in the future. Further, although here there was a lack of evidence regarding a relationship (either as a real party in interest or in privity) between LG and Facebook, which may distinguish this case from future cases, the precedential nature of this decision may indicate the CAFC’s reluctance to reverse the Board on findings of estoppel, generally. Petitioners should take note of the potential advantages of filing substantially similar petitions when challenging patents facing simultaneous challenges from other petitioners. However, the possibility of being estopped based on another petition also means that petitioners should exercise discretion.

In SynQor, Inc. v. Vicor Corp., Case No. 19-1704 (Fed. Cir. Feb. 22, 2021), the Federal Circuit vacated the inter partes reexamination decision from the Patent Trial and Appeal Board (the “Board”).  As part of the decision, the court held that collateral estoppel (issue preclusion) can apply where the Board’s prior determinations involving different claims of related patents addressed the same issue(s).

In the PTAB’s inter partes reexamination decision, the Board held several original claims and newly-presented claims of the 7,072,190 patent (“the ’190 patent”) unpatentable as obvious.  SynQor raised several arguments on appeal, but only two are of relevance in this discussion.  Namely, in appealing the decision concerning the newly presented claims, SynQor argued the decision should be vacated because the patent had expired during the appeal process.   As to the original claims, SynQor argued that common law issue preclusion arising from the Boards’ decisions in two patent family member reexamination proceedings collaterally estopped the Board from making its obviousness holding in the reexamination of the ’190 patent.  Each is addressed, in turn, below.

On the obviousness of the newly-presented claims, the Federal Circuit found that the issue was moot.  The Court reasoned that because newly-presented claims during reexamination do not go into effect unless a reexamination certificate incorporates them, and further because here a reexamination certificate could not amend the claims due to the ’190 patent’s expiration, the issue of whether the newly-presented claims were obvious or not was moot.  See 37 C.F.R. § 1.520(j) (“[N]o amendment, other than the cancellation of claims, will be incorporated into the patent by a [reexamination] certificate issued after the expiration of the patent.”).  Consequently, the Federal Circuit vacated the Board’s decision as to those claims.

On the original claims and the collateral estoppel issue, the Federal Circuit’s decision requires a bit of background.  Importantly, two other patents in same family as the ‘190 patent were subject to reexamination proceedings, patent numbers 7,564,702 (“the ’702 patent”) and 8,023,290 (“the ’290 patent”).  The same combination of prior art references, Steigerwald and Cobos, was presented in the reexamination proceedings of each of the three patents.  In the ’702 patent and ’290 patent proceedings, the Board found the prior art references incompatible, and therefore determined the claims at issue were not unpatentable.  The Federal Circuit affirmed each of those decisions.  However, in the ’190 reexamination, the Board found the prior art references were compatible in its obviousness decision.  The Board’s inconsistent treatment of the compatibility of the prior art references became the basis of the issue preclusion claims.

The Federal Circuit reviewed the applicable statutory provisions and determined that issue preclusion is available in inter partes reexaminations.  The court noted that prior decisions had held that issue preclusion applies to inter partes reviews.  The estoppel that results from inter partes reexamination indicated that issue preclusion should apply equally there also.  The rights and procedures available in a reexamination proceeding met the requirements for issue preclusion to be available generally.

On the facts, the Federal Circuit held that the issues related to the prior art were the same in all three patent reexaminations.  Because the Board had found the same prior art incompatible in the ’702 and ’290 reexamination, it could not now determine the opposite in the ’190 patent proceeding.  Although the court determined it was not clear that the Board relied on new evidence to reach its different conclusion, the principles of collateral estoppel would still apply even if new evidence exists.  This type of second bite at the apple is the interest in finality that collateral estoppel is intended to prevent.  Therefore, the Federal Circuit vacated the Board’s decision on the original claims.

Earlier this month, in the precedential decision M & K Holdings v. Samsung Electronics Co., the Court of Appeals for the Federal Circuit (“the CAFC”) upheld the Patent Trial and Appeal Board (“the Board”) in finding certain references qualified as printed publications. However, the CAFC found the Board erred in finding that a challenged claim anticipated when the petition for inter partes review (“IPR”) asserted only obviousness.

In 2018, Samsung filed a petition for IPR on certain claims of US Patent No. 9,113,163 (“the ’163 patent”). The ’163 patent is directed to an efficient method for compressing video files, with claims covering methods for constructing a “motion vector candidate list,” selecting a candidate from that list, and making an optimal motion prediction for a current block.

The Board found all claims of the ’163 patent unpatentable. In its conclusions, the Board found three disputed references (“WD4-v3,” “Park,” and “Zhou”) were publicly accessible before the ’163 patent’s priority date, and the Board held claim 3 was anticipated by one of Samsung’s cited references, although Samsung’s petition had not asserted claim 3 was anticipated. M&K subsequently appealed.

M&K based its appeal on the grounds that the Board erred in:

  1. Finding Park and Zhou qualified as printed publications, and
  2. Holding claim 3 unpatentable for anticipation.

1) Did the Board Err by Finding Park and Zhou Qualified as Printed Publications?

In its first contention, M&K specifically argued that the Board erred in finding Park and Zhou qualified as printed publications because a person of ordinary skill exercising reasonable diligence in the art could not have located the references. The CAFC seemed to agree with M&K’s statement of the pertinent inquiry, but also noted that “whether a reference is a ‘printed publication’ under 102 involves a case-by-case inquiry into the circumstances under which the reference was disclosed to the public.”

In this case, the Board found Park and Zhou were presented at development meetings attended by 200 to 300 interested persons with no expectation of confidentiality. Additionally, the Board also found that, no later than the meetings, full copies of Park and Zhou were made available to interested persons. M&K contended the references were not displayed prominently, but the CAFC called this contention a misunderstanding – “the relevant inquiry is whether the channel through which the references were publicized is prominent or well-known among persons of ordinary skill in the art.” M&K also contended that the website where the Park and Zhou references were made available did not have full search functionality, but the CAFC rejected this argument as well, upholding the Board’s finding that the website was effectively indexed by subject matter and had title search functionality.

Ultimately, the CAFC rejected the remainder of M&K’s arguments and concluded that substantial evidence supported the Board’s finding that Park and Zhou qualified as printed publications.

2) Did the Board Err by Holding Claim 3 Unpatentable for Anticipation?

In its second contention, M&K specifically argued that the Board’s reliance on anticipation in finding claim 3 unpatentable (when Samsung’s IPR petition challenged claim 3 only on obviousness grounds) deprived M&K of proper notice. The CAFC began by pointing out that the Administrative Procedure Act (“APA”) imposes “particular procedural requirements on the Board,” and that the proper inquiry for the CAFC is if “the Board departed markedly from the evidence and theories presented by the petition or institution decision, creating unfair surprise.”

In this case, Samsung asserted claim 3 was rendered obvious by the combination of references WD4-v3, Park, and Zhou, but Samsung did not assert anticipation at any point. Indeed, in Samsung’s petition, it admitted (albeit, indirectly) that WD4-v3 did not disclose an element of claim 3.

M&K argued the Board based its decision on an interpretation of claim 3 not offered by either party and not disclosed until the Board’s decision. Samsung countered that essentially, the Board’s analysis was inherent in the obviousness theory because a reference that anticipates a claim also renders that claim obvious.

The CAFC ultimately agreed with M&K because although M&K was aware of the prior art the Board used to invalidate claim 3, M&K was not put on notice that the Board might invalidate claim 3 on anticipation grounds. Further, the CAFC found that, rather than being inherent in Samsung’s obviousness theory, an anticipation finding was actually to the contrary. Therefore, the CAFC vacated and remanded with respect to the Board’s decision on claim 3.

A mixed result can offer lessons for petitioners and patent owners. For patent owners, this case reinforces the need to consider what a person of ordinary skill in the art might uncover through reasonable diligence, not what a website makes prominent or easily accessible. For petitioners, this case emphasizes the importance of providing proper notice, even when a theory may seem to have been disclosed inherently.

In Shoes by Firebug LLC v. Stride Rite Children’s Group, LLC, the Federal Circuit held that the same preamble limits the scope of the claims in one patent, but does not limit the scope of the claims in another patent.

Shoes by Firebug LLC (“Firebug”) owns two U.S. patents – U.S. Patent 8,992,038 (“the ’038 patent”) and U.S. Patent 9,301,574 (“the ’574 patent”). Firebug filed a suit against Stride Rite Children’s Group, LLC (“Stride Rite”) for infringement of the two patents. Stride Rite in response filed petitions for inter partes review (IPR) of claims 1-10 of the ’038 patent and claims 1-10 of the ’574 patent, alleging that the challenged claims would have been obvious over the prior art. The Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO) held that the claims of the patents are unpatentable as obvious. In both decisions, the PTAB determined that the preamble of claim 1 of each of the two patents does not limit the claims. Firebug appealed the PTAB’s decisions.

With respect to claim 1 of the ’038 patent, the Federal Circuit agreed with the PTAB and held that the preamble does not limit the scope of that claim because the preamble’s recitation of an “internally illuminated textile footwear” is merely an intended purpose.  The preamble reads as follows:

  1. An internally illuminated textile footwear comprises:
    a footwear;
    the footwear comprises a sole and an upper; …

The Court focused on the body of the ’038 patent claim, which re-introduces “a footwear” that “comprises a sole and an upper” even though the preamble of the claim already recites “footwear.” The Court explained that “[t]he preamble, then, cannot be said to provide essential structure or necessary meaning to the claimed invention because the same element – the footwear – is independently recited in the body of the claim.”

On the contrary, with respect to claim 1 of the ’574 patent, the Court disagreed with the PTAB and held that the preamble limits the scope of the claim. The Court pointed out that the claim relies on the “footwear” limitation introduced in the preamble of the claim as the antecedent basis for “the footwear” subsequently recited in the body of the claim. Relevant portions of the claim are reproduced below:

  1. An internally illuminated textile footwear comprises:
    a sole and an upper;
    an illumination system; …
    the illumination system being housed within the footwear; …

The Court explained that “[w]hile antecedent basis alone is not determinative of whether a preamble is limiting, use of preamble terms to define positive limitations in the body of claims can evince an inventor’s intent that the preamble limit[s] the scope of the claim. This is the case here.” The Court further explained that because the claim requires the illumination system to be housed within the footwear that is already recited in the preamble, the preamble is essential to understanding the structural limitations of the illumination system.

As the Court pointed out, “[w]hether a claim preamble is considered to be a limiting part of the claim matters, inter alia, because, if it is not, the scope of the claim is broader, but the claim is vulnerable to more potentially-invalidating prior art.” This highlights that if a patent owner wants to make sure that the subject matter introduced in a preamble is a limiting part of the claim, the patent owner should positively recite such subject matter in the body of the claim.

Last month, in January 2021, the United States Patent and Trademark Office (“USPTO”) published a memorandum (the “January 2021 Memorandum”) clarifying how it will analyze claims for indefiniteness in AIA post-grant proceedings before the Patent Trial and Appeal Board (“PTAB”), namely patented claims in PGRs and CBMs and proposed substitute claims in IPRs.  Prior to the January 2021 Memorandum, the PTAB applied two different approaches: the Packard approach and the Nautilus approach. According to the January 2021 Memorandum, the USPTO will now exclusively use the Nautilus approach, as further explained below.  This aligns the PTAB with the courts in civil actions.

To satisfy the definiteness requirement, a specification must have “one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”  35 U.S.C. §112(b).

Under the Packard approach, a claim was indefinite if it contained “words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam). By contrast, the Nautilus approach requires an arguably higher threshold, finding a claim indefinite only if the claim fails to identify the inventive subject matter with “reasonable certainty.”  Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 (2014).

The USPTO has traditionally followed the Packard approach, while district courts apply the Nautilus approach. According to the Federal Circuit, the USPTO could properly apply the Packard approach, in the pre-issuance context, because “Congress assigned to the USPTO the responsibility to examine applications to ensure compliance with the statutory criteria” for patentability. More importantly, the applicant plays an “interactive” role pre-issuance and can therefore clarify any initially perceived problems. 751 F.3d at 1311-13. The Federal Circuit later declined to opine on whether the Packard threshold could additionally be applied to AIA post-grant proceedings. See Tinnus Enterprises, LLC v. Telebrands Corp., 733 F. App’x 1011, 1018 (Fed. Cir. 2018).

The question of indefiniteness has been considered “inextricably intertwined” with the claim construction analysis. Cox Commc’ns, Inc. v. Sprint Commc’n Co., 838 F.3d 1224, 1232 (Fed. Cir. 2016). Previously, the USPTO applied the “broadest reasonable interpretation” to the claim construction analysis, while the district courts applied the analysis set forth in Phillips. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In 2018, the USPTO announced that starting November 2018, it would be applying the Phillips claim construction standard for interpreting claims in trial proceedings before the PTAB in order to be consistent with the district courts and to “promote fairness, balance, predictability, and certainty in the patent system.”

Even with the claim construction standard aligned with the district courts, the PTAB and parties were still unclear about whether the indefiniteness analysis should also follow the district courts. Parties began to argue—and the PTAB began to analyze—indefiniteness under both Packard and Nautilus, finding a claim either indefinite or not indefinite under both approaches. See, e.g., Shure Inc. v. ClearOne, Inc., PGR2020-00079, Paper 1 at 29 (PTAB July 28, 2020) (arguing indefiniteness under both Nautilus and Packard); Nippon Suisan Kaisha Ltd. v. Pronova Biopharma Norge AS, PGR2017-00033, Paper 37 at 12 (PTAB Jan. 16, 2019) (finding the claims indefinite under either the Nautilus approach or the Packard approach); Supercell Oy et al v. GREE, Inc., PGR2018-00039, Paper 42 at 42 (PTAB Sept. 6, 2019) (determining the claims are not indefinite under the Nautilus standard or the Packard standard).

In the January 2021 Memorandum, the USPTO clarified that the Nautilus approach is the proper approach for analyzing indefiniteness in AIA post-grant proceedings. The memorandum explained that because the claim construction standard in AIA post-grant proceedings now aligns with the standard used by district courts, and because indefiniteness questions are generally considered as part of the claim construction process, the PTAB’s approach to indefiniteness in AIA post-grant proceedings should similarly align with the analysis used by the district courts and therefore follow the Nautilus approach. As with the claim construction standard, aligning the indefiniteness approach in AIA post-grant proceedings with the courts will “promote consistency and efficient decision making among coordinate branches of government that decide similar issues in co-pending proceedings.”

After November 2018, when many decisions applied both the Packard approach and the Nautilus approach, the percentage of instances in which patented claims were found indefinite decreased compared to when Packard was viewed as the controlling standard. With the USPTO’s January 2021 Memorandum clarifying that the standard in Nautilus is the proper approach, we may see a continued decrease and fewer claims invalidated by the PTAB for indefiniteness.

In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd., No 19-civ-4297 (S.D.N.Y Jan. 19, 2021), the parties’ forum selection clause in their non-disclosure agreement did not prevent Samsung Electronics Co., Ltd. (“Samsung”) from challenging Kannuu Pty, Ltd.’s (“Kannuu”) patent in an IPR proceeding.  The court held IPR petitions did not fall within the scope of the agreement’s forum selection clause.

Kannuu filed a suit against Samsung for patent infringement and breach of contract.  The parties had entered into a non-disclosure agreement years earlier when Samsung inquired about Kannuu’s search-and-navigation technology.  A confidentiality clause limiting the use of disclosed information and a forum selection clause requiring any proceeding “arising out of” or “relating to” the agreement be brought in a court of New York were included in the agreement.

After Kannuu filed suit asserting five of its patents, Samsung petitioned the PTAB for IPR of all asserted claims of the patents.  The IPR petitions for two of the patents were instituted.  In the district court, Kannuu filed a motion for preliminary injunction to restrain Samsung from proceeding before the PTAB in light of the agreement’s forum selection clause.

The court recognized that it may grant such a preliminary injunction if the forum selection clause is valid and enforceable.  This would require that: (1) the clause was reasonably communicated to the party resisting enforcement; (2) the clause is mandatory; and (3) the claims and parties involved in the suit are subject to the forum selection clause.  The first two requirements were not in dispute, but the parties disputed whether the claims were subject to the forum selection clause.

The court ruled that the IPR proceedings do not fall within the scope of the forum selection clause.  The court applied a plain and ordinary meaning when determining what actions “arise out of” or “relate to” the agreement because no definition defining the scope of these terms was present in the agreement.  The agreement concerned the confidentiality of disclosed information and did not grant intellectual property rights or a license to either party.  With this framework, the court noted the IPR proceedings determine the validity of Kannuu’s patents, which do not affect whether Samsung impermissibly used confidential information in violation of the agreement.  The court recognized that some of the information that arose from the discussions after the non-disclosure agreement may be relevant to the IPR proceedings, but found that connection to be too attenuated to be within the plain meaning of “relating to” the agreement.  Finding the likelihood of success on the merits against Kannuu, the court denied the preliminary injunction.

In 2017, Cytonome filed suit in the Western District of Wisconsin (“the District Court”), accusing ABS of infringing six of its patents, including US Patent No. 8,529,161 (“the ’161 patent”). Subsequently, in October 2017, ABS filed for inter partes review (“IPR”) of the ’161 patent, and the Patent Trial and Appeal Board (“the Board”) issued a decision in April 2019 that invalidated certain claims of the ’161 patent while also finding that ABS had failed to demonstrate several other claims as unpatentable.

Shortly after the Board’s decision, the District Court granted in part a motion for summary judgment by ABS, finding that ABS’s products did not infringe any of the ’161 patent’s claims. Nevertheless, nearly two months later, ABS appealed the Board’s decision. At the beginning of January, the Court of Appeals for the Federal Circuit (“the CAFC”) issued a precedential decision in ABS Global v. Cytonome/St, LLC, dismissing ABS’s appeal as moot.

On appeal, Cytonome argued that ABS lacked standing because Cytonome had disclaimed an appeal of the District Court’s finding of non-infringement. ABS, however, argued that a patent-specific exception to the mootness doctrine articulated in Fort James Corp. v. Solo Cup Co., 412 F.3d 1340 (Fed. Cir. 2005) should govern and hence preclude dismissal. The CAFC disagreed with ABS, holding instead that the question of mootness under these circumstances should be guided by Already, LLC v. Nike, Inc., 568 U.S. 85 (2013) and the voluntary cessation doctrine.

In Already, a case of trademark infringement, the Supreme Court stated that a defendant attempting to moot a case by voluntary compliance “bears the formidable burden of showing that it is absolutely clear the allegedly wrongful behavior could not reasonably be expected to recur.” The Court explained:

  1. Respondent Nike had the burden of showing it “could not reasonably be expected” to continue to enforce its trademarks against Already, which Nike showed by entering a covenant not to enforce; and
  2. Once this hurdle had been cleared by the defendant, the burden shifted to Petitioner Already to show “it engages in or has sufficiently concrete plans to engage in activities not covered by the covenant,” which Already failed to show with sufficient specificity.

Therefore, the Court concluded the case was moot. Applying the voluntary cessation doctrine of Already to the facts at issue, the CAFC held:

  1. Appellee Cytonome’s disclaiming its right to appeal the District Court’s finding of noninfringement showed Cytonome “cannot reasonably be expected” to resume enforcement efforts against Cytonome. The CAFC acknowledged that claiming a right to appeal is “narrower” than Nike’s covenant in Already, but the CAFC found it sufficient at least because it was “coextensive with the asserted inquiry.”
  2. Appellant ABS essentially failed to show with sufficient specificity evidence of present activity or plans to engage in activity that would create infringement liability for the ’161 patent. ABS in fact acknowledged that it faces no “specific threat” of an infringement suit under the ’161 patent.

Regarding ABS’s reliance on Fort James v. Solo Cup, the CAFC found the arguments unpersuasive. ABS argued that Fort James, a single district court proceeding, presented an exception to mootness where “a patent owner who strategically waits until after the resolution of its claim for patent infringement to offer a covenant not to sue (and not to appeal) does not moot a challenge to the patent’s validity.” The CAFC found ABS’s arguments overbroad and not necessarily applicable to parallel IPR and district court proceedings.

Finally, ABS asserted at oral argument that, if the CAFC were to find the case moot, then the proper order would be vacatur, not dismissal. The CAFC rejected this assertion, though, holding that ABS failed to timely request vacatur or adequately develop its assertion.

Therefore, the CAFC found the case moot and dismissed.

Chief Judge Prost dissented in part from the majority’s opinion, arguing that vacatur is the proper order, not dismissal.  When the party that prevails below unilaterally moots an appeal, the Chief Judge explained, then the proper course is vacatur, not dismissal, because the case was mooted by “the unilateral act of an adversary to cement its victories below.” Addressing the timeliness of ABS’s request for vacatur, the Chief Judge argued the rationale for vacatur was pronounced, that Cytonome’s theory was a “moving target,” and that courts can and sometimes should grant vacatur sua sponte. The Chief Judge concluded, “Cytonome obtained a favorable determination from the Board, took voluntary action to moot ABS’s appeal, and now will retain the benefit.”

Whether future cases will consider Chief Judge Prost’s dissent remains to be seen. However, at least one key takeaway is the importance of preserving the argument for vacatur on appeal, particularly when parallel proceedings are involved.

In 2017, Twitter, Inc. (“Twitter”) filed two petitions requesting inter parties review (“IPR”) of U.S. Patent No. 9,083,997 (“the ’997 patent”), with the first petition directed to claims 1-19 and the second petition directed to claims 20-35. The Patent Trial and Appeal Board (“the Board”) issued two substantially similar Final Written Decisions (IPR2017-00829, IPR2017-00830) that found all claims of the ’997 patent unpatentable as obvious. The ’997 patent’s assignee, VidStream LLC (“VidStream”), appealed to the Court of Appeals for the Federal Circuit (“the CAFC”) on the grounds that the primary art reference cited by Twitter and relied on by the Board did not qualify as prior art.

Twitter’s IPRs

In its petitions, Twitter cited a book by Anselm Bradford and Paul Haine (“Bradford”) as its primary reference. Twitter filed copies of several pages of Bradford, and the pages contained three pieces of information relevant to Bradford’s status as prior art:

  • The legend on one page: “Copyright © 2011 by Anselm Bradford and Paul Haine.”;
  • The ISBN information on the same page as the copyright:

ISBN-13 (pbk): 978-1-4302-3861-4
ISBN-13 (electronic) 978-1-4302-3862-1; and

  • Apparent publication information stating:

Made in the USA
Middletown, DE
13 December 2015.

When VidStream contended in its patent owner’s response that Bradford is not an available reference because its publication date of December 13, 2015, postdates the ’997 patent’s priority date of May 9, 2012, Twitter replied with:

  • A copy of Bradford from the Library of Congress marked “Copyright © 2011;
  • A copy of Bradford’s Certificate of Registration at the Copyright Office, which gave a registration date of January 18, 2012, and a date of first publication as November 8, 2011;
  • A declaration from “an expert on library cataloging and classification,” who declared Bradford was available at the Library of Congress in 2011;
  • A declaration from an attorney who stated he compared the pages of Bradford submitted with the petitions and the pages from the Library of Congress and found them to be identical; and
  • Copies of Internet Archive webpages showing Bradford listed on a publicly accessible website with the website date November 2, 2011, and website pages dated December 6, 2011, showing Bradford available for purchase from Amazon.

VidStream subsequently filed a sur-reply in response to Twitter’s reply. However, the Board eventually found Bradford was available as a prior art reference and held claims 1-35 of the ’997 patent to be unpatentable.

VidStream’s Appeal

VidStream argued on appeal to the CAFC that the Board erred by accepting and considering the documents that Twitter provided in its replies. VidStream cited to the Patent and Trademark Office’s (PTO’s) Trial Guide, which requires that Petitioner’s “case-in-chief” for an IPR must be made in the petition, and that Petitioner “may not submit new evidence or argument in reply that it could have presented earlier.”

On November 25, 2020, the CAFC affirmed the Board’s finding against VidStream. The CAFC found that the Board properly considered the evidence presented in Twitter’s replies and that, considering the evidence available to it, The Board properly found Bradford was published and publicly accessible before the ’997 patent’s priority date.

It seems two crucial points arise from this case, which has been designated as precedential:

First, new evidence may be introduced after the petition if the evidence is in “reply to evidence introduced by the patent owner, or if it is used to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.” Note that the 2015 publication date of the Bradford reference was apparently introduced by Petitioner Twitter.

Second, even if no one piece of evidence definitively establishes a reference’s public accessibility before the patent’s priority date, the evidence viewed as a whole may still suffice to establish public accessibility.