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.

On November 9, 2020, the Federal Circuit vacated and remanded a decision by the United States Patent Office Patent Trial and Appeal Board (“PTAB”) in Donner Tech., LLC v. Pro Stage Gear, LLC,[1] holding that the PTAB applied an incorrect standard to determine whether a reference in the case was analogous art.  While the Court’s decision did not resolve whether the reference was in fact analogous art, it reiterated the two-part test defining the scope of analogous art and identified the particular deficiencies of the PTAB’s analysis that warranted vacatur.

Donner Tech. involved an inter partes review of U.S. Patent No. 6,459,023 (“the ’023 patent”), related to mounting boards for guitar pedals and owned by appellee Pro Stage Gear, LLC.  All of Donner’s obviousness challenges rested at least in part on U.S. Patent No. 3,504,311, or the “Mullen” patent, which related to support for electrical relays.  The PTAB had held that Mullen did not fall within the scope of the prior art because Donner had failed to prove Mullen’s electrical relay support was analogous art to the ’023 patent’s guitar pedal mounting board.

The Federal Circuit disagreed.  First citing to precedent from In re Bigio,[2] the Court identified the two required questions for establishing analogous art: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”  Acknowledging that the ’023 patent and Mullen were not from the same field of endeavor, the Court next turned to whether Mullen was reasonably pertinent to one or more of the problems addressed by the ’023 patent and the errors by the PTAB in concluding that it was not.

The Court explained that the second analogous art question “ultimately rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose.”  Thus, the Court stated that the reasonable pertinence question requires an identification and comparison of the problems to which both the invention and the reference relate.  Significantly, the analysis must “be carried out from the vantage point of a [person of ordinary skill in the art, or “POSA”] who is considering turning to the teachings of references outside her field of endeavor.”  Finally, the Court dismissed the argument that a POSA’s poor understanding of the whole reference would cut against finding it an analogous art.  Instead, the Court held that the “relevant question is whether the [POSA] would have reasonably consulted the reference in solving the relevant problem,” and that a POSA might reasonably consult a reference that she would not fully understand every last detail as long as she could understand the portions relevant to solving her problem enough to clean useful information.

A finding of analogous art will not end on the field of endeavor, and will depend more on the answer to the second part of the two-part test.  Counsel participating in argument over analogous art should take care to identify the relevant facts of the case addressing the problems that the patent at issue and reference seek to solve, and those facts that demonstrate the accessibility of the reference to those POSAs trying to solve those problems.

[1] No. 2020-1104 (Fed. Cir. Nov. 9, 2020).

[2] 381 F.3d 1320, 1325 (Fed. Cir. 2004).

On October 20, 2020, the United States Patent and Trademark Office (“USPTO” or “Office”) published in the Federal Register “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” seeking public comments on the appropriate considerations for instituting trials before the Patent Trial and Appeal Board (“PTAB”) under the Leahy-Smith America Invents Act (“AIA”). 85 FR 66502.

As explained in the Federal Register, even in cases where a petitioner satisfied the institution standard, the PTAB may exercise its discretion to deny a petition for review under the AIA.  The USPTO has provided substantial guidance about when the PTAB will exercise its discretion to deny an otherwise potentially meritous petition in its Trial Practice Guide, 77 FR 48756 (Aug. 14, 2012) and in over 40 decisions designated as precedential or informative.[i]

The USPTO is interested in the public’s view on its current policies and practices and whether there are any modifications the Office should make to its approach. Particularly, the USPTO is focused on three areas:

(1) Serial petitions where the same petitioner is challenging the same patent;

(2) Parallel petitions when different parties file petitions at or about the same time on the same patent; and

(3) Petitions directed to patents that are or have been subject to other proceedings in other tribunals including a U.S. district court or the International Trade Commission (“ITC”).

To date, over 743 comments have been posted by individuals, inventors, patent practitioners, businesses, and associations/organizations. Below is a brief overview of some of the major viewpoints.

Serial Petitions

Some commenters request a policy of only allowing one petition per patent in order to protect small businesses from overly burdensome litigation. Some commenters support a rule similar to the USPTO’s current view of allowing one petition per patent except in certain circumstances, such as where there are many claims at issue. Others argue that there should be no specified cap on the number of petitions because a predetermined cap is arbitrary and limits meritous arguments of invalidity.

Parallel Petitions

Many commenters agree that the relationship between petitioners should be considered in limiting petitions from different parties, particularly if the different petitioners are real parties in interest or in privity. Some commenters go a step further to request that each patent is subject to no more than one trial under the AIA, and all challenges to a patent under the AIA should be filed within 90 days of the first petition or be denied.

Other Tribunals

Several commenters believe the PTAB should not consider whether the patent is subject to proceedings in other tribunals because the evidence and constructions in other tribunals are different from those before the PTAB. These commenters believe that all meritous arguments should be allowed, particularly when a patent is being heavily asserted against others. Other commenters push back on specific Fintiv factors, particularly the factor looking at the proximity of the other tribunal’s trial date to the PTAB’s projected deadline for a final written decision. These commenters argue that the timing of trial dates in other tribunals, namely district court trial dates, are often out of the litigators’ hands and are frequently pushed back after the PTAB’s institution decision relying on the trial date. In contrast, other commenters believe that all petitions should be denied where the patent is subject to other proceedings in other tribunals because of the burdensome cost of litigation on small patent owners, which could lead to bankruptcy.

Overall, most commenters appear to support promulgation of some version of a rule regarding discretionary denials of PTAB proceedings. The USPTO has shown a strong interest in increasing transparency and providing clear guidelines regarding the PTAB and USPTO’s policies practices. We can expect the Office to continue to provide meaningful guidance, perhaps including the codification of policies regarding discretionary denials.

Public comments may continue to be submitted until December 3, 2020.

[i] See, e.g., General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, 2017 WL 3917706, at *7 (PTAB Sept. 6, 2017) (precedential) (providing a nonexclusive list of factors for “serial” petitions); Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, -00063, -00084, 2019 WL 1490575, at *1 (PTAB Apr. 2, 2019) (precedential) (explaining when different petitioners challenge the same patent, the PTAB considers any relationship between those petitioners when weighing the General Plastic factors); Apple Inc. v. Fintiv, Inc., IPR2020-00019, 2020 WL 2126495, at *2 (PTAB Mar. 20, 2020) (precedential) (describing nonexclusive factors considered when a parallel proceeding is co-pending in another tribunal).

In In re: Google Technology Holdings LLC, No. 2019-1828 (Fed. Cir. Nov. 13, 2020), the Federal Circuit elaborated on the policies underlying waiver and forfeiture of appellate arguments.  Ultimately, the court affirmed the Patent Trial and Appeal Board’s (“the Board”) obviousness rejections of the claims at issue because Google had forfeited the arguments it raised on appeal.

Google’s Patent Application No. 15/179,765 is directed to distributed caching for video-on-demand systems.  The examiner rejected the claims as obvious in view of several prior art references.  Google appealed the final rejection to the Board.  The Board was unpersuaded and affirmed the examiner’s obviousness rejections.

On appeal to the Federal Circuit, Google argued that the Board had erred because it misconstrued certain claim terms.  The Federal Circuit took issue that Google had never presented these construction arguments to the Board.  Therefore, Google had forfeited those arguments.

The Federal Circuit noted that waiver is often used to refer to both waiver and forfeiture by the courts—including its own cases—but the rules and concepts behind the separate terms are well established.  Waiver is the “intentional relinquishment or abandonment of a known right.”  Forfeiture is the “failure to make the timely assertion of a right.”

Forfeited arguments are not considered on appeal in the absence of exceptional circumstances, and such circumstances were not present in this case.  The court noted that by failing to present the arguments to the Board, Google deprived an expert body of its important role in reviewing patent application rejections.  Similarly, consideration of new arguments was not consistent with the Federal Circuit’s place as an appellate court, one charged with reviewing the Board’s decisions, not considering them in the first instance.  Furthermore, considering new arguments raised on appeal would encourage sandbagging by others attempting to gain a strategic advantage.

After determining that Google’s arguments before the Board could not be read to raise the arguments presented in the appeal, the court declined to address the merits of Google’s proposed claim constructions.  The Board’s rejections of the claims was affirmed.