The Precedential Opinion Panel (“POP”) has added more precedential and informative decisions which address key issues facing the Patent Trial and Appeal Board (“PTAB”). These cases provide key insight to guide practitioners before the Board to effectively represent their clients’ best interest.
1. Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019
In this proceeding, Sotera Wireless, Inc. (“Petitioner”) challenged U.S. Pat. No. RE47,353 E owned by Masimo Corporation (“PO”). The patent had been asserted against Petitioner in Masimo Corp. v. Sotera Wireless, Inc., Case No. 3:19-cv-01100-BAS-NLS (S.D. Cal.). In that case, Petitioner filed a stipulation which stated that it agreed not to pursue any grounds that were raised and instituted or could have been reasonably raised in an IPR. Here, in their Preliminary Response, PO argued against institution by advocating for a discretionary denial due to the status of the parallel litigation. In their Reply, Petitioner argued that the stipulation filed in the parallel proceeding lessened potential overlap between the two cases. In their Sur-Reply, PO argued that the stipulation was unclear whether the Petitioner reserved the right to continue with the parallel proceeding using other references cited in the invalidity contentions.
The Patent Trial and Appeal Board (“Board”) rejected PO’s argument and granted institution of the petition for inter partes review (“IPR”) in reliance on the six-factor analysis set forth by Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). The Board’s approval heavily weighed factor 4 (overlap between issues raised in the petition and in the parallel proceeding) of the Fintiv analysis. The Board determined that the broad stipulation mitigated the potential overlap between the instant case and the parallel proceeding. This decision suggests that mitigating overlap with a stipulation like the Petitioner’s may reduce the likelihood of a discretionary denial.
2. Snap, Inc. v. SRK Technology LLC, IPR2020-00820
In this case, Snap, Inc. (“Petitioner”) challenged U.S. Pat. No. 9,930,159 owned by SRK Technology LLC (“PO”). PO asserted this patent against Petitioner in SRK Technology LLC v. Snap, Inc., Case No. 2:19-cv-02515-PSG-JPR (C.D. Cal). In that proceeding, the district court granted a stay, pending denial of institution by the Patent Trial and Appeal Board (“Board”). Here, in their Preliminary Response, PO contended that the parallel proceeding would resume, and trial would occur at or before the final written decision deadline upon denial of institution. In reply, Petitioner argued that upon granting institution, the stay would remain until the Board issued a final written decision. Further still, Petitioner argued that a stay weighs in favor of granting institution because it mitigates duplicative efforts and inefficiencies.
The Board agreed with Petitioner and classified PO’s argument as mere speculation, while granting institution of the petition for inter partes review (“IPR”) in reliance on the six-factor analysis set forth by Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). The Board’s approval heavily weighed factor 1 (whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted) of the Fintiv analysis. The Board determined that a stay in the parallel proceeding alleviated concerns of repetitious work and inefficiencies. This case illustrates the potential impact of a stay on the Board’s consideration of factor 1 of the Fintiv analysis when determining approval of an IPR.
3. RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750
In this proceeding, RPX Corporation, (“Petitioner”) challenged U.S. Pat. No. 8,484,111 and U.S. Pat. No. 7,356,482 owned by Applications in Internet Time, LLC, (“PO”). The key issue in this case was the failure of Petitioner to name Salesforce.com, Inc. (“Salesforce”) as a real party in interest (“RPI”). Initially, the Patent Trial and Appeal Board (“Board”) had instituted the proceeding over PO’s objections to Salesforce’s omission. PO appealed the decision to the Federal Circuit, which admonished the court, explaining that Congress intended the term ‘real party in interest’ have its expansive common-law meaning. Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351.
On remand, the Board determined that Salesforce was in fact an RPI to the proceeding. The Board noted that Salesforce previously challenged the patents at issue and was denied institution. See Salesforce.com, Inc. v. Applications in Internet Time, LLC, CBM2014-00162, Paper 2 (filed Aug. 1, 2014); Salesforce.com, Inc. v. Applications in Internet Time LLC, CBM2014-00168, Paper 2 (filed Aug. 4, 2014). Salesforce had also paid Petitioner considerable membership fees, and over multiple interactions, discussed with Petitioner the Salesforce-PO litigation concerning the instant patents. The Board inferred from these facts that Petitioner filed the current proceedings in part to benefit Salesforce and permit it to have a second chance at invalidating PO’s patents.
Accordingly, the Board then relied on 35 U.S.C. § 315(b), which prohibits institution of an IPR if the petition is “filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” and terminated the IPRs.
4. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734
In this case, SharkNinja Operating LLC, (“Petitioner”) challenged U.S. Pat. No. 9,921,586 owned by iRobot Corp., (“PO”). The main issue here was Petitioner’s failure to list its corporate parent, JS Global Lifestyle Company Limited (“JS Global”) as a real party in interest (“RPI”). In their Preliminary Response, PO argued that Petitioner’s omission served as grounds for denial under 35 U.S.C. § 312(a)(2), which requires identification of all RPIs in the petition. Further, PO contended that evidence supports JS Global’s involvement with Petitioner’s disputes in the instant case. In their Sur-Reply, Petitioner argued that the correct RPIs were listed and—if required—should be allowed to amend its mandatory notices.
The Patent Trial and Appeal Board (“Board”) looked to differing Board decisions for guidance. Some used extensive analysis to determine if a party should be listed as an RPI and others noted that such analysis is unnecessary when determining institution. The Board adopted the latter method in the interests of cost and efficiency. It dismissed PO’s argument and declined to consider if JS Global was an unlisted RPI, noting that even if JS Global should have been listed, that alone would not have established a time bar or estoppel under 35 U.S.C. § 315. Further, the Board recognized Petitioner’s willingness to amend its mandatory notices if necessary and dismissed the argument for denial of institution based on a procedural requirement that could easily be corrected in accordance with Board precedent.
5. Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854
In this proceeding, Apple Inc., (“Petitioner”) challenged U.S. Pat. No. 6,467,088 owned by Uniloc 2017 LLC, (“PO”) and filed a Motion for Joinder with Microsoft Corp.’s challenge of the patent in IPR2020-00023 (“the ’023 IPR”) as the role of “understudy.” Petitioner was previously denied institution for the challenged patent in Apple Inc. v. Uniloc 2017 LLC, IPR2019-00056. In its Opposition, PO argued for denial of Joinder using the factors set forth in General Plastic for Director’s discretionary authority under 35 U.S.C. § 314(a) because of Petitioner’s previous challenge. General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). Further, PO contended that Petitioner was using Joinder to secure a second review. In reply, Petitioner argued that its request for Joinder was not subject to General Plastic.
The Patent Trial and Appeal Board (“Board”) dismissed Petitioner’s argument noting that General Plastic is relevant when considering denial under § 314(a), even if the petition is a follow-on petition or if the petitioner seeks an “understudy” role as Petitioner here does. Further, the Board determined that all but one of the General Plastic factors weighed against Petitioner with the remaining factor being neutral and denied both inter partes review (“IPR”) and Joinder. It noted that Joinder is typically an efficient means for becoming a petitioner in an IPR but because this was Petitioner’s second attempt for review with the possibility of continuing a potentially terminated proceeding, if Microsoft settles with PO, the Board’s finite resources outweighed Petitioner’s request. The Board used its denial of institution to also deny Joinder under 35 U.S.C. § 315(c).
1. Apple Inc. v. Fintiv, Inc., IPR2020-00019
In this proceeding, Apple Inc., (“Petitioner”) challenged U.S. Pat. No. 8,843,125 owned by Fintiv, Inc., (“PO”). The Patent Trial and Appeal Board (“Board”) denied institution of the petition for inter partes review in reliance on the Precedential Order (“Order”) it issued in this case. The Order set forth factors to consider when determining to apply discretion to deny institution under 35 U.S.C. § 314(a) due to the advanced stage of a parallel proceeding. The factors seek to balance fairness, efficiency, and patent quality for patent owners in such circumstances. The Order lists the factors as follows: “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.”
In denying institution, the Board noted that the district court’s scheduled trial date was two months before the Board’s final decision cutoff. Also, there was some level of effort expended in the parallel proceeding concerning claim construction and invalidity contentions. Further, Petitioner’s challenged claims relied on the same prior art in both the Petition and the district court. The above in addition to the parties being the same in each proceeding, and that PO had pointed out that at least two of Petitioner’s three independent claims were too close to call, weighed in favor of denying institution. The Board’s decision and Order set forth an influential analysis to be used in determining institution for granting an inter partes review.
2. Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393
In this proceeding, Sand Revolution II, LLC, (“Petitioner”) challenged U.S. Pat. No. 8,944,740 owned by Continental Intermodal Group – Trucking LLC, (“PO”). After the Patent Trial and Appeal Board (“Board”) originally used its discretion to deny institution, Petitioner concurrently filed both a Request for Rehearing of the Denial Decision and that the Board’s Precedential Opinion Panel (“POP”) reassess the previous decision. After the POP refused to reconsider the case, the Board initiated the rehearing and granted institution of the petition for inter partes review in reliance on the six-factor analysis set forth by Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential).
When weighing the factors, the Board noted that the lack of an issued stay in the parallel proceeding did not weigh for or against granting institution. However, the uncertainty regarding the trial date in the district court weighed in favor of granting institution while the effort invested in the parallel proceeding only slightly if at all weighed in favor of denying institution. Further, Petitioner’s stipulation to not pursue the grounds in this case in the parallel proceeding mitigated the risk of overlap and weighed in favor of granting institution. Lastly, the Board recognized that while the parties were the same in each case—which weighs in favor of denying institution—the other factors weighed in favor of granting institution and Petitioner sufficiently showed its likelihood of success in challenging the obviousness of the claims. Because of this, the Board granted institution of the petition for inter partes review. This proceeding highlights the usefulness of the Fintiv factors when determining to exercise discretion to deny institution under 35 U.S.C. § 314(a).
The Panel’s designations of each of these will be important to note moving forward for patent owners and PTAB petitioners alike. If you have any questions or concerns about how any of these decisions may affect your intellectual property rights and strategies, please reach out to us here.