In many instances, it may be advantageous to challenge patent
validity via an AIA trial in front of the Patent Trial and Appeal
Board (PTAB). Despite all of the advantages to an AIA trial, a potential AIA
trial petitioner should also consider the potential downsides particularly when involved
in concurrent district court litigation. One such potential
downside – that the denial of a petition for an inter
partes review (IPR) may be used against the petitioner –
is illustrated by a recent summary judgment decision in the
District Court of the Southern District of Ohio.1
Procedurally, the litigation involves a pattern that has become
quite common with the availability of AIA trials. Proctor &
Gamble (P&G) filed suit alleging infringement of patents
relating to tooth whitening products and the alleged defendants
then took the patent validity challenge from court to the PTAB.
Specifically, P&G sued Team Technologies alleging infringement
of three patents pertaining to home tooth whitening products (U.S.
Patent Nos. 5,891,453 (the '453 Patent); 5,894,017 (the
'017 Patent); and 7,122,199 (the '199 Patent)). Defendants
Clio USA, Inc. and Brushpoint Innovations, Inc. were added at a
later date. 2 Clio filed an IPR for each of the
patents-in-suit. The PTAB denied institution of the IPRs for many
of the challenged claims, and granted as to a small number of the
claims.3 Meanwhile, the District Court refused to stay
the proceeding pending outcome of the IPRs.
With the IPRs still ongoing, P&G moved for summary judgment of
validity alleging that the Defendants could not meet their burden
of proof. Defendants, in turn, moved for summary judgment of patent
invalidity. The Defendants' summary judgment motion relied in
large part on the same arguments, the same references, and
supporting expert testimony that the PTAB determined to be
insufficient to meet the threshold of IPR institution.
The Court granted summary judgment of validity and denied
Defendant's motion of summary judgment of patent invalidity, in
part relying on the PTAB's refusal to institute the
IPRs.4 Specifically, in the IPRs, the PTAB rejected the
same arguments but under the lower standard in front of the
PTAB.5 The Court's reasoning focused on the
Defendants' inability to meet the threshold requirements to
institute the proceedings:
In this litigation, Defendants bear the burden of establishing
invalidity by clear and convincing evidence. In order to show that
the challenged claims are invalid in the IPR proceeding, however,
Clio must only meet a preponderance of the evidence standard.
Further, for the PTAB to institute proceedings in the first place,
Clio needed only to show a reasonable likelihood that it would
ultimately succeed under the lower "preponderance of the
evidence" burden. Nevertheless, under this "reasonable
likelihood" standard, which is significantly lower than the
"clear and convincing" burden in this litigation, the
PTAB found that Clio's and Dr. Gaffar's inherency arguments
were insufficient. (Internal citations omitted.)6
Moreover, the Court also relied on the PTAB's denial of
Clio's request for rehearing of the PTAB's institution
decisions, noting, "[t]he PTAB rejected Clio's inherency
arguments, under a lower standard of proof, not once, but
twice."7
Thus, the decision in Team Technologies illustrates a
large potential downside that should be considered before filing a
petition for IPR. Should the PTAB decline to institute an IPR even
as to some of the challenged claims, this denial may be relied upon
in a concurrent District Court litigation to show that the burden
of proving invalidity cannot be met. Potential IPR petitioners
should be mindful of this potential negative inference being drawn
by the District Court.
Moreover, the Team Technologies case shows that District
Courts may exercise their discretion to rely on concurrent AIA
trials as evidence of a patent's validity and/or
invalidity.8
1 The Procter & Gamble Corporation v. Team
Technologies, Inc., Case No. 1:12-cv-552, order granting
summary judgment of no invalidity and denying motion for summary
judgment of invalidity (S.D. OH. July 3, 2014).
2 Id., see also IPR2013-00438 (IPR of
the '017 patent); IPR2013-00448 (IPR of the '454 patent);
IPR2013-00450 (IPR of the '199 patent)
3 See IPR2013-00438 (granted as to claim 21,
denied as to claims 1 to 3, 6-9, 11-13 of the '017 patent);
IPR2013-00448 (granted as to claims 1, 19 and 21, denied as to
claims 2,3, 6-9, 11-13 and 18 of the '453 patent);
IPR2013-00450 (denied as to claim 20; instituted as to claims 17,
23-26, and 28-30 of the '199 patent)
4 P & G, Case No. 1:12-cv-552 order at
21.
5 Id.
6 Id. at 21-22 (internal citations
omitted)
7 Id. at 24.
8 Id. at 22, fn. 4 ("Opinions from
administrative agencies may be properly considered as evidence
under Fed. R. Evid. 803(8) if the findings are trustworthy and
probative of the issues.").
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.