DTN, LLC v. Farms Technology, LLC,  IPR2018-01412, -01525 (June 14, 2019)

On June 11, 2020, the PTAB designated as precedential its 2019 decision in  DTN, LLC v. Farms Technology, LLC. The decision concerns the scope of the obligation to file agreements with the Patent Office under 35 U.S.C. §317(b) when seeking a termination.

The statute reads as follows:

Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause. Continue Reading The Obligation to Submit Agreements in IPRs Is Broad

General Electric Co. v. Raytheon Technologies Corporation, fka United Technologies Corporation, Case No. 19-1012.

On February 24, 2020, we reported on GE’s petition for certiorari to the Supreme Court. The petition sought review of the Federal Circuit’s doctrine on Article III standing for petitioners to appeal IPR decisions, which essentially required a possibility of an infringement suit against the petitioner. The petition was based in large part on Federal Circuit Judge Todd Hughes’ views that the Federal Circuit applied too strict a standard.

On May 26, 2020, the Supreme Court denied the petition for certiorari.

On May 27, 2020, the Federal Register published proposed rule changes to trial procedures before the PTAB. The rule changes address and codify the following:

(1) Institution will be on all challenged claims or none, and on all asserted grounds if there is institution;

(2) Permit sur-replies to principal briefs, and response and replies to decisions on institution; and

(3) Eliminate the presumption in favor of the petitioner at the institution phase for a genuine issue of material fact created by testimonial evidence submitted in a preliminary response from a patent owner.

Comments to the rules must be received by the USPTO by June 26, 2020.

The rules are published at 85 FR 31728 (May 27, 2020), and can accessed here.

Esip Series 2, LLC v. Puzhen Life USA, Appeal No. 2019-1659 (Fed. Cir., May 19, 2020)

Puzhen petitioned for an IPR against Esip’s patent relating to a combining of germicidal protection and aromatic diffusion in an enclosed space. Some of the claims were held to be obvious by the PTAB and the Federal Circuit affirmed on that issue. Continue Reading Another Non-Appealable Issue

Virnetx Inc. v. Cisco Systems, Inc., Appeal No. 2019-1671 (Fed. Cir., May 13, 2020).

Inter partes reexamination was a non-trial procedure that allowed third parties to participate in patent reexamination, and has now been replaced by inter partes and post-grant reviews. Inter partes reexaminations were conducted before a panel of examiners, and then subject to review by the PTAB in an appeal capacity. Here, Cisco and the Director of the USPTO sought rehearing of a decision that extended the Arthrex doctrine to inter partes reexaminations. Continue Reading Arthrex and Reexamination

Caterpillar Paving Products Inc. v. Wirtgen America, Inc., Appeal No. 2020-1261 (Fed Cir., May 6, 2020).

On May 5, 2020, the Federal Circuit issued a precedential order holding that IPR petitioners cannot seek the Arthrex do-over. One day later, the Federal Circuit placed another limitation on the applicability of the Arthrex doctrine. Continue Reading Another Arthrex Limit

Ciena Corp. v. Oyster Optics, LLC, Appeal No. 2019-2117 (Fed. Cir., May 5, 2020).

On January 28, 2020, the Federal Circuit issued a non-precedential order that denied IPR petitioner Ciena’s motion to have a judgment vacated and remanded under Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). The order was made precedential on May 5, 2020. Continue Reading Arthrex Is Not for Everyone

Grit Energy Solutions, LLC v. Oren Technologies, LLC, Appeal No. 2019-1063 (Fed. Cir.. April 30, 2020).

Grit Energy filed a petition for inter partes review against Oren’s U.S. Patent No. 8,585,341 pertaining to systems of storing and discharging proppants, such as sand. The PTAB found the Grit Energy did not satisfy its burden to show that the claims of the ‘341 patent were obvious. Continue Reading The Federal Circuit Finds Article III Standing

Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp., Appeal No. 2018-2273 (Fed. Cir., April 23, 2020).

Argentum and other petitioners filed IPRs against Novartis’ patent related to methods of treating relapsing-remitting multiple sclerosis. Novartis prevailed before the PTAB. All petitioners then settled but for Argentum. Continue Reading Article III Standing Strikes Again

Thryv, Inc. v. Click-To Call Technologies, LP, et al., 590 U.S. ___, Case No. 18-916 (slip op., April 20, 2020)

IPR petitioner Thryv challenged patent owner Click-To-Call’s patent and several claims were cancelled. Click-To-Call sought judicial review of the IPR institution decision.

Click-To-Call alleged that a 2001 lawsuit between predecessor companies triggered the Section 315(b) one-year limit for filing IPRs after lawsuits. The suit was voluntarily dismissed without prejudice, but Click-To-Call contended that the 2001 lawsuit made the 2013 IPR untimely due to the one-year limit. Slip Op. at 2, 4. The PTAB disagreed with Click-To-Call’s contention and instituted the IPR.

On appeal, the Federal Circuit dismissed Click-To-Call’s appeal for lack a jurisdiction. Thereafter, the Federal Circuit decided Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc), where the Federal Circuit decided that time-bar determinations are appealable, and then the Federal Circuit granted a rehearing in the Thryv v. Click-To-Call case. The Federal Circuit then vacated the PTAB’s decision in the 2013 IPR for untimeliness. Slip op. at 4-5.

Upon review, the Supreme Court vacated the Federal Circuit judgment. The Supreme Court reasoned that the PTAB’s decision to institute was “closely tied to the application and interpretation” of the patent statute, rather than a constitutional question, and therefore the bar to appeals under Section 314(d) would control. Slip op. at 7. Thus, the PTAB’s decision to institute the IPR was not appealable.