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Written Decision Needed For IPR Estoppel

In Finjan, Inc. v. Cisco Systems, Inc. Case No. 17-cv-00072-BLF (N. D. Cal. Feb. 3, 2020) the Northern District of California denied Plaintiff Finjan’s motion for summary judgement of validity of a number of claims of various patents asserted against defendant Cisco. Finjan’s arguments were centered around a pair of petitions for inter partes review filed by Cisco, and the court’s denial articulates the applicably of estoppel in situations where petitions are denied institution. The pair of petitions at the center of Finjan’s arguments were filed with the PTAB by Cisco after Finjan had sought enforcement of a few of its patents. The patents at issue had been subject to, and survived, challenges at the PTAB and Federal Circuit. Cisco was not a party to, or identified as a party of interest in, the previous challenges. The PTAB denied institution of the pair of petitions filed by Cisco. In addition…

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Prosecution History Crucial for Claim Interpretation of “Remote”

The Federal Circuit has again highlighted the importance of prosecution history for patent claim interpretation. In Baker v. Microsoft Corp., No. 2017-2357 (Fed. Cir. Apr. 9, 2018) the Federal Circuit upheld a district court claim interpretation and grant of summary judgement of non-infringement of US Patent 5,486,001. Defendant Microsoft manufactures and sells various computing devices, peripheral devices, and software. For example, Microsoft sold a computer system that included a camera as a peripheral device. Plaintiff Baker owns the ‘001 patent. The ‘001 patent is directed towards a “Personalized Instructional Aid.” The ‘001 patent describes a system designed to provide feedback to a user regarding their body movement, e.g., the way the user swings a golf club. The system captures image signals of user movements at one location, compares the image signals with prestored image signals and generates instruction signals based on the comparison at a second “remote” location, and transmits…

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CBM Estoppel Limited to Substantially Identical References

A district court recently held the scope of estoppel from covered-business-method (CBM) review encompasses the references used in the CBM as well as almost-identical references. (Solutran, Inc. v. U.S. Bancorp et al. (D. Minn. 2018).) This dispute started with Solutran suing U.S. Bank for infringement of U.S. Patent No. 8,311,945. The ’945 patent covers a method of processing checks. U.S. Bank retaliated by petitioning for CBM review, claiming that the ’945 patent was obvious over admitted prior art in the patent and U.S. Patent App. No. 2005/0071283 to Randle. The Patent Trial and Appeal Board instituted review but eventually sided with Solutran. Solutran now argues that at trial, U.S. Bank cannot argue obviousness and cannot rely on a reference related to the Randle ’283 application. The estoppel provision for CBM reviews states that the “[p]etitioner … may not assert … in a civil action … that the claim was invalid…

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When to Convert a CIP Patent Application into a Divisional

The Federal Circuit recently clarified the limits of the safe harbor provision of 35 USC §121. In In re: Janssen Biotech, Inc., New York University, No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision affirming invalidity of claims of US Patent 6,284,471 under the doctrine of obviousness-type double patenting. As a reminder, § 121 states in part: If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. . . The ’471 patent issued from a continuation-in-part (CIP) patent application, no. 08/192,093.  The ’093 application claimed priority to multiple…

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No Estoppel for Art in Contentions but Not IPR Petition

Earlier this month in Koninklijke Philips N.V. v. Wangs Alliance Corp., Civil Action No. 14-12298-DJC (D. Mass. Jan. 2, 2018), the District of Massachusetts added another case to the majority view of the scope of inter partes review estoppel, deciding that Wangs could assert prior art included in invalidity contentions but omitted from a subsequent IPR petition. Philips had asserted infringement of seven patents: Patent Nos. 6,147,458; 6,250,774; 6,561,690; 6,586,890; 6,788,011; 7,038,399; and 7,352,138. In due course, Wangs filed invalidity contentions against the patents-in-suit, and at the one-year deadline, Wangs petitioned for IPRs. The PTAB granted the IPRs for six of the seven patents. While the court stayed the case, the PTAB handled the IPRs, ruling for Wangs on some claims but not others. In the immediate motion, Philips moved to prevent Wangs from relying on prior art left out of its contentions under local rules, and to estop Wangs…

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