PTAB Strategies and Insights - September 2020

View OnlineSeptember 2020 VISIT WEBSITECONTACT USSUBSCRIBEFORWARD TO A FRIENDAuthor:Author:Author:The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio.This month we cover:How the Federal Circuit treats APA challenges differently; The Federal Circuit's recent reissue of its original March2020 decision in Facebook v. Windy City; andWe look at two recent exemplary cases that are illustrativeof current trends for petitioner estoppel.We welcome feedback and suggestions about this newsletter toensure we are meeting the needs and expectations of our readers.So if you have topics you wish to see explored within an issue ofthe newsletter, please reach out to me.To view our past issues, as well as other firm newsletters,please click here.Best,Jason D. EisenbergEditor & Author:Author:Jason D. EisenbergDirectorjasone@sternekessler.comSean C. FloodAssociatesflood@sternekessler.comIN THIS ISSUE Does the Federal CircuitTreat APA ChallengesDifferently if Brought byPetitioner vs. PatentOwner? Yes.Thryv Does Not BarAppellate Review ofSame Party and NewIssue Joinder UnderSection 315(C), and BothJoinders areImpermissibleSnap Shot Summer 2020-Recent Trends inApplying 315(e)/325(e)EstoppelDOWNLOADDavid W. HaarsAssociate dhaars@sternekessler.comTrent W. Merrell Associate tmerrell@sternekessler.comKaren Wong-ChanPatent Agentkwchan@sternekessler.comTHRYV DOES NOT BAR APPELLATE REVIEW OF SAME PARTY ANDNEW ISSUE JOINDER UNDER SECTION 315(C), AND BOTH JOINDERSARE IMPERMISSIBLEBy: David W. Haars and Jason D. EisenbergIn view of the Supreme Court’s Thryv[i] decision, the Federal Circuit recently reissued itsoriginal March 2020 decision in Facebook v. Windy City[ii] (Windy City I) after grantingFacebook’s petition for rehearing and denying Facebook’s petition for en banc review. Thereissued, second decision[iii] (Windy City II) (1) affirmed that § 314(d) does not preclude thecourt from reviewing the Board’s joinder decision under § 315(c), and (2) reaffirmed that, basedon the unambiguous text of § 315(c), same party / new issue joinder is impermissible under thestatute. Read MoreDOES THE FEDERAL CIRCUIT TREAT APACHALLENGES DIFFERENTLY IF BROUGHTBY PETITIONER VS. PATENT OWNER? YES.By: Karen Wong-Chan, Trent W. Merrell, and Jason D.EisenbergLast month’s newsletter discussed Alacritech, Inc. v. IntelCorp, where patent owner Alacritech appealed a finalwritten decision (FWD) of the Patent Trial and AppealBoard (“Board”) for inter partes review (IPR) IPR2017-01410 alleging Administrative Procedure Act (APA)violations—and won. This month we compare thatdecision to FanDuel, Inc. v. Interactive Games LLC,where petitioner FanDuel appealed a FWD of IPR2017-01491 alleging similar APA violations—and lost.Read MoreSNAP SHOT SUMMER 2020 - RECENTTRENDS IN APPLYING 315(e)/325(e)ESTOPPELBy: Sean C. Flood and Jason D. EisenbergThis month we first refresh our readers on Shaw and SAS,and then we will look at two recent exemplary cases thatwe feel are illustrative of the current trends for petitionerestoppel. We will show that the trend in the district courts for 35U.S.C. §§ 315(e) and 325(e) estoppel analysis generallyfollows a two prong inquiry — first, whether the petitionerThe information contained in this newsletter is intended to convey general information only, and shouldnot be construed as a legal opinion or as legal advice. Sterne, Kessler, Goldstein & Fox P.L.L.C. disclaimsliability for any errors or omissions, and information in this newsletter is not guaranteed to be complete,accurate, and updated. Please consult your own lawyer regarding any specific legal questions.© 2020 Sterne, Kessler, Goldstein & Fox P.L.L.C Click Here to opt-out of this communicationknew of the references (i.e., subjective prong), and second,whether a skilled searcher reasonably could havediscovered the references through a diligent search (i.e.,objective prong).Read MoreView Online September 2020 VISIT WEBSITECONTACT USSUBSCRIBEFORWARD TO A FRIENDDOES THE FEDERAL CIRCUIT TREAT APA CHALLENGES DIFFERENTLYIF BROUGHT BY PETITIONER VS. PATENT OWNER? YES. By: Karen Wong-Chan, Trent W. Merrell, and Jason D. EisenbergLast month’s newsletter discussed Alacritech, Inc. v. Intel Corp, where patent ownerAlacritech appealed a final written decision (FWD) of the Patent Trial and Appeal Board(“Board”) for inter partes review (IPR) IPR2017-01410 alleging Administrative Procedure Act(APA) violations—and won. This month we compare that decision to FanDuel, Inc. v.Interactive Games LLC, where petitioner FanDuel appealed a FWD of IPR2017-01491alleging similar APA violations—and lost.In both cases, appellant essentially argued the Board raised and answered its own issues in theFWD without addressing issues raised by either appellee (FanDuel) or both parties(Alacritech). Yet the Court rendered opposite decisions. So we ask—are these outcomes due todifferent burdens and requirements on petitioners and patent owners? No in Alacritech and yesin FanDuel. We discussed Alacritech last month. This month we focus on FanDuel andpetitioner appeals.In FanDuel, the Board found all challenged claims unpatentable except claim 6.[i] FanDuel’sappeal alleged that the Board violated the APA because the Board’s obviousness findings forclaim 6 were not based on issues that the patent owner raised during the proceeding. FanDuelalso argued that, because the Board based its decision on Board-raised issues, FanDuel wasentitled to notice and an opportunity to respond before the Board could issue a FWD.The Federal Circuit disagreed with FanDuel and affirmed the Board. Judge Hughes held thatunder the APA “the petitioner shall have the burden of proving a proposition ofunpatentability.”[ii] The Federal Circuit further determined that “the Board complied with theAPA and its obviousness findings are supported by substantial evidence.”[iii]First, the Court held that different standards of proof are required to institute an IPR versus toinvalidate a patent. The different standards allow the Board to adopt an initial view versus afinal decision without notifying the parties. To institute an IPR, the Board needs only areasonable likelihood that a petitioner will succeed. But to invalidate a patent, the petitioner hasthe burden of proving a proposition of unpatentability by a preponderance of evidence.[iv]Second, the Court held that “because the IPR petitioner is the party seeking an order from theBoard, § 556(d) [of the APA] requires the petitioner to bear the burden of persuasion.”[v]FanDuel asserted in its petition that claim 6 was obvious in view of a three-referenceThe information contained in this newsletter is intended to convey general information only, and shouldnot be construed as a legal opinion or as legal advice. Sterne, Kessler, Goldstein & Fox P.L.L.C. disclaimsliability for any errors or omissions, and information in this newsletter is not guaranteed to be complete,accurate, and updated. Please consult your own lawyer regarding any specific legal questions.© 2020 Sterne, Kessler, Goldstein & Fox P.L.L.C Click Here to opt-out of this communicationcombination. Patent owner did not have to submit any response to a petition before or afterinstitution.[vi] So to require patent owner to develop a post-institution record, e.g., on whetherclaim 6 is rendered obvious, “effectively and impermissibly” shifts the burden of persuasion tothe patent owner to defend a claim’s patentability. [vii]Finally, because petitioners and patent owners have different burdens of persuasion to bear, theAPA was not violated by the Board confirming the claim even under its own theories.In contrast, as discussed in last month’s article, the Court in Alacritech held that under the APA“[the Federal Circuit’s] review of a patentability determination is confined to ‘the grounds uponwhich the Board actually relied.’”[viii] And that under the APA “the agency [has an]… obligationto develop an evidentiary basis for its findings.”[ix] The Board’s FWD was vacated andremanded because it did not “articulate a satisfactory explanation for its action including arational connection between the facts found and the choice made.”[x] Summary: In an IPR, the burden of persuasion is borne by the petitioner whose petition definesthe scope of litigation from institution to final decision. The patent owner’s responses areoptional and do not limit the issues the Board can address in the FWD when finding a claimvalid. Yet the Board is always obligated to articulate a satisfactory explanation wheninvalidating a claim. [i] FanDuel, Inc. v. Interactive Games LLC, No. IPR2017-01491, 2018 WL 6112966 (P.T.A.B.Nov. 20, 2018).[ii] 35 U.S.C. § 316(e).[iii] FanDuel, Inc. v. Interactive Games LLC., 966 F.3d 1334 (Fed. Cir. 2020).[iv] See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016) (“[T]hedecision to institute and the final written decision are ‘two very different analyses,’ and eachapplies a ‘qualitatively different standard.’” (quoting TriVascular, Inc. v. Samuels, 812 F.3d1056, 1068 (Fed. Cir. 2016))).[v] See Magnum Oil, 829 F.3d at 1375 (stating that the petitioner bears the burden to prove un-patentable the challenged claims); see also Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242(Fed. Cir. 2018.)[vi] 37 C.F.R. §§ 42.107(a).[vii] See Magnum Oil, 829 F.3d at 1376 (“[I]t is inappropriate to shift the burden to thepatentee after institution to prove that the patent is patentable.”); Dynamic Drinkware, LLC v.Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“In an inter partes review, theburden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of theevi-dence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”).[viii] Alacritech, Inc. v. Intel Corp., 966 F.3d 1367, 1372 (Fed. Cir. 2020) (ci...