In Acoustic Technology, Inc. v. Itron Networked Solutions, Inc., No. 2019-1061 (Fed. Cir. Feb. 13, 2020), the Federal Circuit found Acoustic waived its 35 U.S.C. § 315(b) time bar challenge to the PTAB’s jurisdiction and affirmed the PTAB’s finding of unpatentability of U.S. Patent No. 6,509,841 (“the ’841 patent”).  The Court also concurrently affirmed the PTAB’s finding of unpatentability of U.S. Patent No. 5,986,574 (“the ’574 patent”) in Acoustic Technology, Inc. v. Itron Networked Solutions, Inc., No. 2019-1059 (Fed. Cir. Feb. 13, 2020).

In 2010, Acoustic sued Itron for infringement of the ’841 and ’574 patents.  The parties ultimately settled, and Itron became time barred from seeking inter partes review (“IPR”) of the two patents.

Years later, Acoustic sued Silver Spring Networks, Inc. for infringement of the ’841 and ’574 patents and Silver Spring filed petitions for IPRs of the two patents.  After the PTAB instituted IPRs of the two patents and review was underway, Silver Spring and Itron merged so that Itron became the real party in interest.  The PTAB found the ’841 patent unpatentable as anticipated by two references and obvious in light of two other references.  The PTAB also found the ’574 patent unpatentable as obvious. At no point during the IPR did Acoustic raise a time bar challenge.

On appeal, the Federal Circuit declined to determine at what point the section 315(b) time bar attached, rejecting Acoustic’s challenges as waived since Acoustic did not raise time-bar challenges at the PTAB for either IPR.  Acoustic argued that a time bar is jurisdictional and therefore can be raised at any time.  The Federal Circuit disagreed, noting the difference between challenges to agency jurisdiction and federal court jurisdiction.  The Court also found that substantial evidence supported the Board’s finding that the ’841 patent was unpatentable.  Lastly, the Court rejected Acoustic’s non-obviousness arguments for the ’574 patent as waived since Acoustic did not raise the same arguments at the PTAB.

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