United States: The PTAB Trial Tracker

Last Updated: May 10 2017
Article by Cynthia LambertHardman and Sarah Fink

Parallel District Court and PTAB Proceedings

In Douglas Dynamics, LLC v. Meyer Prods. LLC, No. 3:14-cv0886-JDP (W.D. Wis. April 18, 2017), the district court for the Western District of Wisconsin drew a clear line regarding petitioner estoppel:  estoppel applies to (1) grounds on which the Board instituted IPR, and (2) grounds of which petitioner was reasonably aware but did not include in its IPR petition, but following the Federal Circuit's Shaw decision, does not apply to grounds that petitioner included in its IPR petition, but on which the Board did not institute IPR. 

The court explained the competing policy considerations underlying estoppel.  With respect to grounds of which defendant was aware  but did not include in its IPR petition, the court found that policy considerations favor a broad application of estoppel.  If a defendant/petitioner is not estopped from pursuing such grounds in a district court, the defendant/petitioner would be incentivized to hold grounds "in reserve in case the IPR does not go defendant's way."  The court found that this would be contrary to the AIA's legislative history, which suggests that IPR was intended to be a complete alternative to litigation. 

With respect to grounds that the defendant/petitioner included in its IPR petition but on which the Board declined institution, the court held that the Federal Circuit's decision in Shaw is "crystal clear" that estoppel does not apply to grounds that were included in the IPR petition, but not instituted.  The court also found that policy considerations favor a narrow application of estoppel.  According to the court, petitioners should not sacrifice judicial review of meritorious invalidity grounds through no fault of their own.  "As long as PTAB has the unreviewable discretion to decline to institute IPR on any ground for any reason, the defendant ought to be able to assert non-instituted grounds in the district court after the IPR is concluded."

Takeaway: The Federal Circuit's Shaw decision continues to influence the estoppel outcome in district courts.  Many courts have followed Shaw's rationale that no estoppel attaches to grounds presented in a petition but denied institution.  Courts have been more variable in deciding whether estoppel applies to grounds that the petitioner reasonably knew about but did not include in its petition.  Here, the court applied estoppel to such grounds.  We expect that the estoppel case law will continue to develop, so parties are well-advised to keep a close eye on this developing body of law.

In Novartis, AG v. Noven Pharms, Inc., No. 2016-1678 (April 4, 2017), the Federal Circuit affirmed the PTAB's finding that claims were unpatentable as obvious.  Two prior decisions by the District Court for the District of Delaware had found that the claims were not invalid due to obviousness, one of which was affirmed by the Federal Circuit (the second decision was not appealed).  The Federal Circuit explained that although the same prior art references were at issue in both fora, and the same experts testified in both fora, the PTAB and district court relied on different factual records.  The court further explained that, even if the records had been identical, due to the different standards of proof (preponderance of the evidence at the PTAB and clear and convincing evidence at the district court), the two fora could still reach different conclusions.

Takeaway:   This case aptly demonstrates that the different burdens of proof in the PTAB versus the district court, and the lack of deference accorded to judgments between the two fora, can sometimes result in inconsistent judgments on the same patent.  The Federal Circuit was careful to point out that in the Cuozzo case, the Supreme Court expressly acknowledged the possibility of such inconsistent outcomes.  This case is a cautionary tale for patent owners:  even if patent claims survive district court litigation, they can still be vulnerable to cancellation in a later IPR. 

In Microsoft Corp. v. Global Techs., Inc., IPR2016-00663 (Paper 24, P.T.A.B. Mar. 21, 2017), the Board applied collateral estoppel to prevent a purported patent owner from re-litigating the question of patent ownership, which had already been decided in district court.  

The Board had originally instituted IPR with one Mr. Raniere appearing as the Patent Owner, pursuant to an alleged assignment of the patent from Global Techs. to Mr. Raniere.  The district court had dismissed a parallel litigation involving the same patent because it found that Mr. Raniere, the plaintiff in that case, had no standing to sue for patent infringement, as the assignment was invalid and he was therefore not the owner of the patent.  The Federal Circuit affirmed.  Following the Federal Circuit's affirmance, at Petitioner's request, the Board authorized Petitioner to file a motion to expunge the materials Mr. Raniere had filed as Patent Owner in the IPR.

After considering the four factors that are part of a determination of collateral estoppel [(1) identity of the issues in the prior proceeding; (2) whether the issues were actually litigated; (3) whether the determination of the issues was necessary to the resulting judgment; and (4) whether the party defending against preclusion had a full and fair opportunity to litigate the issues], the Board held that Mr. Raniere was collaterally estopped from asserting the invalid assignment as evidence of his ownership of the patent.  The Board allowed time for Petitioner to attempt to serve the proper Patent Owner, and will decide the motion to expunge and whether to move forward with the IPR when that time expires.

Takeaway:  Due to the different burdens of proof, the Board has previously rejected the application of collateral estoppel to a district court's decision on patentability.  For example, in Interthinx, Inc. v. Corelogic Solutions, LLC, CBM2012-000007 (Paper 58 Jan. 30, 2014), the Board reasoned that because the PTAB and district courts apply different standards of proof, and because the Board had not participated in the prior court proceeding, res judicata and collateral estoppel did not prevent the PTAB from independently deciding the patentability of a patent previously litigated in district court.  This case demonstrates, however, that the Board may apply collateral estoppel to other issues that come before it.

PTAB

In Xactware Solutions, Inc. v. Eagle View Techs., Inc., IPR2017-00034 (Paper 9, April 13, 2017), the Board exercised its discretion not to institute inter partes review for reasons unrelated to the merits of the Petitioner's patentability challenge.  This was Petitioner's second IPR petition on the same patent.  In denying the petition, the Board's primary concern was prejudice to the Patent Owner based on "Petitioner's strategy of morphing its challenges over multiple petitions based on the Board's feedback."  (Page 11.)

In evaluating whether to institute the follow-on petition, the Board considered five factors:  (a) whether the same petitioner previously filed a petition directed to the same claims of the same patent; (b) whether the petitioner knew or should have known of the prior art asserted in the later petition when it filed its earlier petition; (c) whether at the time of filing the later petition, the petitioner already received the patent owner's preliminary response to the first petition or received the Board's decision on whether to institute review in the earlier petition; (d) the length of time that elapsed between when the petitioner had the patent owner's or Board's analysis on the earlier petition and when petitioner filed the later petition; and (e) whether the petitioner provided adequate explanation as to why the Board should permit another attack on the same claims of the same patent.

Takeaway:  Petitioners disappointed with the outcome of a first IPR should be aware of these five factors and the Board's views on serial petitions before filing a second petition for a IPR on the same patent.  While the Board has not consistently denied serial petitions for IPR in the past, this case outlines the factors the Board will evaluate when considering whether to use its discretion to deny institution under 35 U.S.C. § 314(d).

In Robert Bosch Tool Corp. v. SD3 LLC, IPR2016-01751(Paper 15, Mar. 22, 2017), the Board's decision not to institute inter partes review depended, in part, on Petitioner's failure to address secondary considerations.  Petitioner was a respondent in an ITC investigation concerning the patent at issue in the IPR.  The ITC case had advanced sufficiently so that Petitioner knew Patent Owner's positions concerning secondary considerations.  The Board explained that since Petitioner had full knowledge of the secondary considerations alleged by Patent Owner prior to filing the petition, Petitioner should have addressed those secondary considerations in its petition.

Takeaway:  Petitioners should review all prior proceedings concerning the challenged patent, and should address in their petitions any secondary considerations patent owner raised in other proceedings.

In IBG, LLC v. Trading Techs. Int'l Inc., CBM2015-00054 (Paper 38, April 7, 2017), the Board denied Petitioner's motion to strike a certain exhibit and a string cite in the Patent Owner Response.  Petitioner had argued that by citing the exhibit and including the string cite, Patent Owner improperly attempted to establish a nexus for its alleged objective evidence of nonobviousness without explaining how the cited evidence established the nexus.  The Board agreed with Petitioner that the Response was an improper attempt to incorporate arguments by reference, but instead of striking the offending exhibit and string cite, determined that it would just "not consider such arguments."  Having decided that it would not consider the exhibit and string cite, the Board also denied Petitioner's request that it be allowed to submit a Reply with an extra 3,000 words.

Takeaway:  The Board strictly enforces its word limit rules, requiring certification of word count to be filed for many documents.  Here, a party's reference to voluminous materials in support of a conclusory assertion was deemed to be an improper incorporation by reference. 

In Green Cross Corp. v. Shire Human Genetic Therapies, Inc., IPR2016-00258 (Paper 91, March 31, 2017), the Board denied Patent Owner's Motion to Seal an exhibit with a figure that was "central to the Final Written Decision."  Patent Owner had relied on the contested exhibit in an effort to antedate a prior art reference, and the Board found that the exhibit was "extensively relied upon by Patent Owner and Patent Owner's experts."  The Board found that the strong public interest in having a complete public record outweighed Patent Owner's interest in keeping this exhibit confidential. 

Takeaway:  Parties must be aware that confidential materials they file in IPRs will not necessarily remain confidential, particularly where the Board and parties rely on such materials.  

Goodwin Procter LLP is one of the nation's leading law firms, with a team of 700 attorneys and offices in Boston, Los Angeles, New York, San Diego, San Francisco and Washington, D.C. The firm combines in-depth legal knowledge with practical business experience to deliver innovative solutions to complex legal problems. We provide litigation, corporate law and real estate services to clients ranging from start-up companies to Fortune 500 multinationals, with a focus on matters involving private equity, technology companies, real estate capital markets, financial services, intellectual property and products liability.

This article, which may be considered advertising under the ethical rules of certain jurisdictions, is provided with the understanding that it does not constitute the rendering of legal advice or other professional advice by Goodwin Procter LLP or its attorneys. © 2013 Goodwin Procter LLP. All rights reserved.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.