Somebody’s Wrong: PTAB Must Resolve Conflicting Factual Testimony During IPR
In Google LLC v. IPA Technologies Inc., Appeal No. 21-1179, the Federal Circuit held that, for purposes of determining whether a reference was prior art, the Board has an obligation to resolve fundamental testimonial conflicts.
Google petitioned for inter partes review of two of IPA Technologies’ patents. Google argued that the IPA patents would have been obvious over Martin, an academic paper that included both the inventors and non-inventor Douglas Moran as authors. During prosecution, the examiner identified Martin as prior art and issued a rejection under 35 USC 102(a). In response, the Applicant submitted inventor declarations asserting that Dr. Moran was not a co-inventor of the claimed subject matter otherwise disclosed in Martin. The examiner withdrew rejections because the invention was not “by others,” and thus outside the scope of section 102(a). Google’s petition nevertheless relied on Martin, and Google attempted to establish Martin as prior art based on Dr. Moran’s contribution to inventorship reflected in Martin. After a trial, the Board concluded that Google had not provided sufficient support to explain how Dr. Moran’s contributions to the Martin reference established that he was part of the inventive entity, and entered final written decisions holding the challenged claims not unpatentable.
Google appealed. On appeal, the Federal Circuit observed that the parties agreed that the Board’s holding was based on insufficient corroboration of Dr. Moran’s inventorship. The court explained that co-authorship on a paper does not presumptively make the co-author a co-inventor, but that co-authorship is still “significant corroborating evidence that a co-author contributed to the invention.” As such, the Federal Circuit concluded Dr. Moran’s testimony was sufficiently corroborated by his being named as a co-author, as well as his role in a related project and his being named on a related patent. Because sufficient evidence of corroboration existed, the court concluded that the Board erred by not addressing the inventorship issue on the merits. The Federal Circuit also observed that it was not a “tenable position“ for the Board to find both Dr. Moran’s and the inventors’ conflicting testimony credible. The Federal Circuit remanded for the Board to resolve this “highly relevant evidentiary conflict and make appropriate findings of fact.” Finally, the court rejected IPA’s argument that the Board’s decision could be affirmed because, even if Dr. Moran was an inventor, he could be added to the patent, which would remove Martin as prior art. Because IPA Technologies had not sought correction of the inventorship of the patents, the Federal Circuit held IPA’s argument unavailing. The Board vacated and remanded for further proceedings.
Negative Claim Construction Found Inadequate
In Sound View Innovations, LLC v. Hulu, LLC, Appeal No. 21-1998, the Federal Circuit held that it was improper to find a claim limitation was missing without affirmatively construing the limitation and instead relying on its relation to a term not shown to have a sufficiently uniform meaning in the art.
Sound View Innovations, LLC (“Sound View”) sued Hulu, LLC alleging infringement of a patent claim related to streaming multimedia. The district court construed the claim to require a “buffer.” On summary judgement, to satisfy the “buffer” requirement, Sound View pointed to components that the accused system labeled as “caches.” The district court noted that the asserted patent also used the term “caches” to identify components, and that the patent describes those components as distinct from “buffers.” The district court therefore held that the accused components labeled as “caches” could not be the required “buffers” and granted summary judgement of non-infringement. Sound View appealed.
The Federal Circuit reversed the non-infringement determination. It noted that, to the extent the district court construed the term “buffer,” all it did was declare what it must exclude (a “cache”). The Federal Circuit acknowledged there is no per se rule against negative constructions. But it held the district court’s negative construction in this case did not enable a comparison between the required “buffer” and the accused product. The Court noted there had been no determination that the term “cache” has a sufficiently uniform meaning in the art. Absent such a determination, it reasoned, a conclusion that the asserted patent distinguishes “caches” from “buffers” does not preclude a finding that accused components labeled as “caches” practice the required “buffers.” Further, the Federal Circuit held an affirmative construction of “buffer” was needed for the additional reason that the asserted patent does not appear to use the terms “buffer” and “cache” in a mutually exclusive manner. The Court therefore vacated the entry of summary judgment of non-infringement and remanded.
The Board Has The Final Say on Time Bar Decisions
In Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., Appeal No. 21-1759, the Federal Circuit held that a termination decision made by the Board in part based on the time-bar was “intimately related” to the institution decision, and therefore not reviewable by the Federal Circuit under 35 U.S.C. §314(d).
Bennett sued Atlanta Gas for infringement of its patent related to an anti-icing device for a gas pressure regulator. Atlanta Gas was served with the complaint on July 18, 2012, but the litigation was dismissed by the district court without prejudice for lack of personal jurisdiction. Atlanta Gas filed an IPR petition requesting review of Bennett’s patent exactly one year after the complaint was served. The IPR was instituted, but before a final written decision was issued, the Board vacated its institution decision and terminated the IPR because Atlanta Gas failed to list all real parties-in-interest in its petition.
In February 2015, Atlanta Gas filed another IPR petition on substantially the same grounds. Bennett argued that this petition was time barred because more than one year had passed since its July 2013 complaint was served. The Board disagreed and reasoned that the one-year clock to file an IPR reset when the district court dismissed the original action without prejudice. After the written decision invalidating Bennett’s patent was issued, Bennett learned that a corporate merger involving Atlanta Gas’s parent company had occurred, but had not been disclosed to the Board. Bennett moved for sanctions and termination of the proceedings since the merger had occurred before the final written opinion had been issued. The Board agreed that monetary sanctions were appropriate but denied Bennett’s request for termination. Both parties appealed to the Federal Circuit.
The Federal Circuit vacated the Board’s decision and held that Atlanta Gas’s petition was time barred because it was filed more than one year after it was served with a complaint alleging patent infringement. The Court remanded the case for the Board to finalize the outstanding sanctions issues and terminate the proceedings. However, before the Board was able to carry out these orders, the Supreme Court held in Thryve that the Federal Circuit did not have jurisdiction to review time bar determinations since those decisions are intimately related to institution decisions, which are protected from appeal. Accordingly, this case went back to the Federal Circuit to consider the merits of the Board’s invalidity determination. The Court affirmed the invalidity determination, and once again remanded back to the Board to finalize the outstanding sanctions issues.
On remand, the Board vacated both its institution and written decision, and terminated the proceedings due to a change in PTO policy regarding the time bar. In its termination decision, the Board explained that no monetary sanctions would be awarded, because the vacatur and termination “most effectively resolve the issues…by operating as a sufficient sanction…while still conforming to [USPTO policy].”
Atlanta Gas appealed the Board’s vacatur and termination decisions, arguing that the Federal Circuit had jurisdiction because the Board characterized its termination decision as a sanction. The Federal Circuit dismissed the case and found that it lacked jurisdiction because the Board’s termination decision was based in part on the time bar issue. It noted that the Board has sole authority over its institution decisions and inherent authority to reconsider and vacate those decisions, including after remand from the Federal Circuit. Newman provided a dissenting opinion.