PTAB Finds Estoppel In Decision Addressing the Meaning of “Reasonably Could Have Been Raised” in Cases Joined Following Institution of Trial
by Rehan M. Safiullah, Akin Gump
The Patent Trial and Appeal Board (PTAB) partially dismissed Facebook, Inc. and WhatsApp Inc. from an inter partes review (IPR) proceeding on estoppel grounds, where both parties were involved in an earlier proceeding on the same challenged claims.
On May 11, 2017, Facebook and WhatsApp filed an IPR petition on claims 1–8 of U.S. Patent No. 8,995,433 (“the ’433 patent”), which was later instituted (Case IPR2017-01427). On June 16, 2017, Facebook and WhatsApp filed a second IPR petition and a motion for joinder to an already instituted IPR proceeding challenging claims 1–6 and 8 of the ’433 patent (Case IPR2017-00225). Both parties were joined as petitioners in that proceeding. Subsequently, the PTAB issued a final written decision in Case IPR2017-00225, concluding that claims 1–6, and 8 of the ’433 patent were not shown to be unpatentable. The parties to Case IPR2017-01427—still pending in front of the Board—disputed whether Facebook and WhatsApp were estopped under 35 U.S.C. § 315(e)(1) from maintaining an IPR on the ’433 patent.
The PTAB began by noting that Facebook and WhatsApp were aware of the grounds asserted in IPR2017-01427 at the time they joined IPR2017-00225. The PTAB then addressed Facebook and WhatsApp’s argument that they should not be estopped following the Final Written Decision in IPR2017-00225 because the trial was already instituted when they joined and, therefore, they could not have raised the grounds asserted in IPR2017-01427 in that proceeding. The Board found Facebook and WhatsApp’s argument unpersuasive. The Board stated that the relevant question was whether Facebook and WhatsApp “did raise or reasonably could have raised the asserted grounds when [they] filed the motion to join IPR2017-00225.” While the Board recognized it would have been difficult to expand the scope of that proceeding in the motion to join, the petitioners had the option of requesting to consolidate the cases. The Board emphasized that, although they were not required to, the “petitioners chose to join IPR2017-00225, knowing the limited scope of the case.” The PTAB therefore dismissed Facebook and WhatsApp from the proceeding with respect to their challenge of claims 1-6 and 8 under § 315(e)(1).
The Board’s dismissal was only a partial one, however, because (i) Facebook and WhatsApp were not estopped from maintaining their challenge to claim 7 of the ’433 patent, which was not included in IPR2017-00225 and (ii) LG had joined Case IPR2017-01427 as a petitioner but was not subject to the estoppel on claims 1–6 and 8. The PTAB held that the “dismissal of Facebook and WhatsApp does not limit LG’s participation in any way” and allowed LG to “assume the role of challenger of all claims.” As to Facebook and WhatsApp’s participation, the PTAB held that they could “not participate in the proceeding to categorically challenge the unpatentability of claim 1, notwithstanding claim 7’s dependence from that claim.”
(Facebook, Inc., v. Uniloc USA, Inc., IPR2017-01427, Paper No. 30 (PTAB May 29, 2018)).
PTAB Rejects Previously Presented Arguments, Gives Examiner Deference, and Denies IPR Institution
by Brock F. Wilson, Matthew George Hartman & Rubén H. Muñoz, Akin Gump
On June 28, 2018, the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review of a patent based on two invalidity grounds because the panel determined that the primary arguments asserted by the petitioner were already considered and rejected by the Patent Office during prosecution. Petitioner first argued that the challenged patent claims were not entitled to the priority date of a parent patent application because (1) the parent application failed to adequately incorporate by reference two other patent applications (the “incorporated patent applications”) and (2) the parent application itself did not provide written description support for the claims. Petitioner also argued that a patent publication was invalidating prior art because it was invented “by another,” as it names two other inventors in addition to the named inventor of the challenged patent. The PTAB, however, found that each of these arguments had been considered and rejected during prosecution.
Regarding the first argument, the petitioner maintained that the incorporated patent applications were incorporated only for their descriptions of a particular claimed component, and not for descriptions of other claimed components, which petitioner alleged lacked written description support. The patent owner, however, argued that the incorporated patent applications were incorporated in their entirety and that two separate examiners had made such a determination during prosecution. After examining the prosecution histories of the challenged patent and its family members, the PTAB found that the examiners had previously considered whether adequate written description support existed. Further, the PTAB disagreed with the petitioner that the incorporation by reference was limited to the particular component because the relevant passage “is subject to at least one additional interpretation.” Finally, the PTAB presumed that the examiners also previously considered whether the parent application itself provided written description support. In light of the forgoing, the PTAB ruled that review is discretionary and that under 35 U.S.C. § 325(d) it may take into account “whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Thus, the PTAB found that the petitioner “failed to sufficiently show error in the Office’s previous determinations” and rejected petitioner’s first argument.
Regarding petitioner’s second argument, the PTAB again found that the issue was previously considered during prosecution of the challenged patent and its family members. There, the named inventor provided two declarations, which the examiner found “proves that the [named inventor] conceived or invented the subject matter disclosed in the [alleged prior art patent publication].” Based on the examiner’s finding, the PTAB rejected the petitioner’s argument that the allegedly invalidating disclosures in the prior art patent publication were “by another” and admonished the petitioner for failing to address the prosecution history of one of the parent applications, which disclosed the examiner’s findings.
Finally, regarding a third invalidity ground raised by the petitioner, the PTAB found that petitioner had failed to demonstrate that a purported prior art combination disclosed all of the claim limitations of the independent claims. In particular, the PTAB did not agree that the petitioner’s purported showing that a component would “allow the driver to view into a blind spot” satisfied a claim limitation requiring the “field of view of [the component to] generally view towards a blind spot.” The PTAB also found that petitioner did not demonstrate that a person of ordinary skill would have used the disclosures of one of the combined references to modify the other. Specifically, the PTAB did not find a factual basis to support petitioner’s expert’s argument that the modified prior art reference would suffer from the shortcoming serving as the reason for making the combination. Based on the forgoing, the PTAB rejected all of petitioner’s grounds for review.
SMR Automotive Sys. USA, Inc. v. Magna Mirrors of America, Inc., IPR2018-00505 (PTAB June 28, 2018) [Medley (opinion), Kaiser, Hagy].
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