Estoppel – Patent

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 to the petitions, Cisco challenged the validity of Finjan’s patents in the district court case. The invalidity theories presented in the district court were different than those of the IPR petitions – namely, they used different art and relied on expert testimony. Finjan’s primary argument pieced together Cisco’s use of… Read More »Written Decision Needed For IPR Estoppel

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 the instruction signal to the first location for display. Baker amended the claims of the ‘001 patent during prosecution to include limitations directed to performing the method steps at various locations. Exemplary claim 1 of the ‘001 patent recites: A method for providing an instructional aid for assisting a person… Read More »Prosecution History Crucial for Claim Interpretation of “Remote”

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 on any ground that the petitioner raised during” the CBM review. (Pub. L. 112-27, § 18(a)(1)(D), 125 Stat. 330 (2011).) The scope is ostensibly narrower than estoppel from inter partes review or post-grant review, which cover “any ground that the petitioner raised or reasonably could have raised during” the review.… Read More »CBM Estoppel Limited to Substantially Identical References

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 other applications, and was part of a somewhat complicated family of applications and patents, whose relationships are diagramed below. The ’471 patent was challenged in an ex parte reexamination under the doctrine of obviousness-type double patenting over US Patent 5,656,272 During the reexamination, and to overcome an obviousness-type double patenting… Read More »When to Convert a CIP Patent Application into a Divisional

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 from relying on prior art included in its contentions but not in its IPR petitions. Several courts have tackled the IPR estoppel issue, to differing results. Section 315(e) of Title 35 estops a party from raising “any ground that the petitioner raised or reasonably could have raised during that inter… Read More »No Estoppel for Art in Contentions but Not IPR Petition

IPR Estoppel Remains Elusive for Patent Owners

In Finjan v. Blue Coat Systems, LLC, No. 15-cv-03295-BLF, (N.D. Cal. July 28, 2017), the court took the majority view on the scope of Inter Partes review estoppel, finding no estoppel for grounds of invalidity not included in a petition and for grounds of invalidity denied institution by the Patent Trial and Appeal Board. Finjan had sued Blue Coat, among several others, for infringement of several cybersecurity patents relating to “content-based security,” counteracting malicious code in downloaded files based on the behavior of the code rather than a maintained list of viruses and malicious code. Finjan’s enforcement campaign had spawned numerous IPR petitions before the PTAB. Blue Coat had joined four inter partes reviews filed by other defendants against U.S. Patent Nos. 8,677,494 and 8,225,408, which the PTAB instituted, with some claims of the ’494 patent and all claims of the ’408 patent surviving. Finjan moved for summary judgment that the grounds of invalidity left out of the petitions but raised in the litigation against the ’494 and ’408 patents should be estopped. Blue Coat had also filed its own IPR petitions against U.S. Patent Nos. 6,154,844; 6,965,968; 7,418,731; and 8,079,086, but the PTAB denied institution. Finjan moved for summary… Read More »IPR Estoppel Remains Elusive for Patent Owners

Estoppel, or Lack Thereof, in Inter Partes Reexaminations

The Federal Circuit recently clarified the scope of estoppel for inter partes reexaminations, ruling in a pair of decisions that a district-court decision only estops arguments against individual claims of a patent and that a dismissal without prejudice does not estop the reexamination. In re Affinity Labs of Texas, 2016-1092, -1172, -1173 (Fed. Cir. May 5, 2017). Affinity Labs sued Apple, Volkswagen, and others in district court over patents relating to audio content and connecting media players. Apple and Volkswagen each filed for inter partes reexaminations. The district court, meanwhile, found that claims 28 and 35 of a patent asserted against Volkswagen were valid over Volkswagen’s arguments. Apple, for its part, settled its district court case with Affinity Labs and filed a notice of nonparticipation in the reexamination. The district court dismissed the Affinity Labs–Apple case without prejudice. To be clear, this case deals with inter partes reexamination, which the America Invents Act replaced with the now-popular inter partes review. The AIA allowed parties to file new requests for inter partes reexaminations through 2012, and pending requests could continue to completion. The requests from Volkswagen and Apple were pending. The relevant portion of the pre-AIA estoppel provision reads: Once a… Read More »Estoppel, or Lack Thereof, in Inter Partes Reexaminations

Broad Estoppel for IPR Petitioner Asserting Prior Art in District Court

Uncertainty over IPR estoppel continues. In Douglas Dynamics, LLC v. Meyer Products LLC, the Western District of Wisconsin recently ruled that grounds of invalidity left out of a petition for inter partes review are estopped and cannot be raised in district court—contrary to the rulings of other district courts. Civ. No. 14-cv-886-jdp (W.D. Wis. Apr. 18, 2017). Before delving into the district court’s reasoning, some background: The America Invents act states that an IPR petitioner may not reassert a ground of invalidity—an allegedly anticipatory reference or obviousness combination—in court “that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2). The Federal Circuit interpreted this provision in Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016), holding that grounds of invalidity are not estopped if a petitioner includes them in a petition but the PTAB does not institute on those grounds. The Federal Circuit reasoned that the inter partes review begins upon institution, so noninstituted grounds cannot be raised during the IPR, as § 315 requires. Some district courts extended Shaw to grounds of invalidity not even included in the petition. One example, previously covered twice on… Read More »Broad Estoppel for IPR Petitioner Asserting Prior Art in District Court

Judge Robinson Revisits IPR Estoppel, Seeking Federal Circuit Clarification

A district court recently reaffirmed its ruling that statutory estoppel does not apply to grounds of invalidity that could have been included in a petition for an inter partes review but weren’t, clearing the way for the defendant to raise those grounds of invalidity against the patent at trial. Intellectual Ventures I LLC et al. v. Toshiba Corp. et al., Civ. No. 13-453-SLR (D. Del. Jan. 11, 2017). The facts in this case were discussed in an earlier post on this blog; suffice to say, the defendant Toshiba filed an IPR petition against one of the patents in suit but didn’t include a particular obviousness combination, which Toshiba now wants to present at trial. In considering the issue in more depth, the court provides a useful summary of the current binding law on estoppel. If the PTAB institutes a ground for invalidity of a patent in an IPR, then the petitioner is estopped from raising that ground in litigation over that patent, whether or not the PTAB’s final decision covers those grounds. However, a petitioner is not estopped from raising grounds in litigation that the petitioner included in a petition but on which the PTAB did not institute review—the ruling… Read More »Judge Robinson Revisits IPR Estoppel, Seeking Federal Circuit Clarification

Narrow Estoppel for IPR Petitioner Asserting Prior Art in District Court

A district court recently interpreted the statutory estoppel from an Inter Partes Review (IPR) to not apply to prior art that was publicly available at the time of the petition. Intellectual Ventures I LLC et al. v. Toshiba Corp. et al., Civ. No. 13-453-SLR (D. Del. Dec. 19, 2016).  Bites at the apple: we all want more of them. Patent defendants would love to have a bite at invalidating patent claims asserted against them in an Inter Partes review, followed by a second bite at any remaining claims in a civil trial.  Here, the defendants got to bite at the whole apple. When Congress enacted the IPR procedure, estoppel was an attempt to balance this powerful tool for invalidating patents with patent owner’s rights in a civil trial: “The petitioner in an inter partes review of a claim in a patent … may not assert [] in a civil action … that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2). In IV v. Toshiba, Toshiba asserted that U.S. Patent No. 5,500,819 was obvious based on three prior art references that Toshiba had previously… Read More »Narrow Estoppel for IPR Petitioner Asserting Prior Art in District Court