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Latest Federal Court Cases, 03/15/21

March 15, 2021

Overview

Uniloc 2017 LLC v. Facebook Inc., Appeal Nos. 2019-1688, -1689 (Fed. Cir. Mar. 9, 2021)

In this week’s Case of the Week, Uniloc appealed from two consolidated IPR decisions finding multiple claims unpatentable as obvious. The Federal Circuit affirmed, addressing several discrete issues. It first addressed the foremost issue of “whether 35 U.S.C § 314(d)’s ‘No Appeal’ provision bars this court’s review of the Board’s conclusion that under ‎§ 315(e)(1) a ‎petitioner is not estopped from maintaining the IPR proceeding before it.” Next, the Court addressed multiple challenges to the Board’s estoppel conclusions. Finally, the Court addressed challenges to the Board’s findings of unpatentability on all claims and the Board’s claim construction of the term “attaches to.”

The patent at issue involved Uniloc’s claimed methods of Voice over Internet Protocol whereby instant voice messages may be delivered over an IP network using either the “record mode” or the “intercom mode.”

Multiple parties were interested in invalidating the claims of the patent at issue. Facebook and WhatsApp (“Facebook”), LG, and Apple all filed IPRs alleging multiple claims were unpatentable as obvious. In May 2017, Facebook filed two IPR petitions challenging multiple claims as obvious. Meanwhile, Apple had filed an IPR petition that was pending at the Board. In June 2017, Facebook filed a new IPR petition identical to Apple’s, and filed a motion to join that IPR with Apple’s previously pending IPR. The Board granted Facebook’s motion to join Apple’s IPR. Separately, LG filed IPR petitions identical to Facebook’s initial two IPRs, and filed motions to join both of Facebook’s IPRs. At that point, as Facebook was a party to multiple IPRs, the Board ordered the parties to “brief the applicability, if any, of 35 U.S.C. § 315(e)(1) against Facebook, in light of the anticipated, soon-to-be-issued final written decision for the Apple IPR, to which Facebook was a joined party.” The parties submitted supplemental briefs. It was not until after this supplemental briefing that the Board granted LG’s motion to join Facebook’s IPRs.

In May 2018, the Board issued a final decision in Apple’s IPR, upholding all challenged claims as patentable. Shortly thereafter, the Board issued a decision dismissing Facebook in part from its own IPR, finding that Facebook was estopped from challenging all of the claims that were at issue in Apple’s IPR (claims 1-6 and 8). The sole remaining claim that Facebook was able to challenge in one of its IPRs was claim 7. Additionally, the Board concluded “that the dismissal of Facebook … does not limit LG’s participation in any way, and therefore, LG was to assume the role of challenger as to all claims, with Facebook’s … participation limited as to issues concerning solely claim 7.” In November 2018, the Board issued its final decision on the remaining consolidated IPRs, concluding that all claims were unpatentable as obvious. On appeal, Uniloc challenged the Board’s estoppel conclusions, its unpatentability determinations, and its claim construction of the term “attaches to.”

The Court affirmed the Board conclusions on all challenged issues. It first addressed the initial matter of whether ‎35 U.S.C § 314(d)’s “No Appeal” ‎provision barred it from reviewing Uniloc’s challenges to the Board’s estoppel conclusions. Subsection 314(d) states that “[t]he determination by the Director [of the Patent Office] whether to institute an inter partes review under this section shall be final and nonappealable.” The Court explained that “since the onset of IPRs, questions [have arisen regarding] whether we have the authority to review certain matters addressed in an IPR that are not directly related to the ultimate patentability decisions the Board renders in a final written decision.” The Court concluded that § 314(d) does not preclude it from reviewing a challenge to the Board’s conclusion that ‎§ 315(e)(1) ‎does not estop a petitioner from maintaining the proceeding before it. In reaching this conclusion, the Court explained that judicial review is not precluded where the “estoppel-triggering event arises after [a determination that a petition warrants] institution.” Thus, the Court found that Uniloc’s challenge of the Board’s decision not to estop LG from challenging claims 1–8 was ‎reviewable because when the Board instituted review of Facebook’s IPR, no final decision had been issued in Apple’s IPR. The Court found that Uniloc’s estoppel challenge as to Facebook was reviewable because its challenge to claim 7 “was a ‎separate and later determination not closely tied to institution and therefore not barred by § ‎ 314(d).”‎

The Court next addressed the substance of Uniloc’s challenges to the Board’s estoppel determinations, obviousness determinations, and claim construction. First, the Court addressed Uniloc’s challenge of the Board’s finding that LG was not estopped as a Real Party in Interest (“RPI”) of or in privy with Facebook. The Court rejected Uniloc’s argument and affirmed the Board’s decision, explaining that “just because LG expressed an interest in challenging the ’433 patent’s patentability, through its filing of its own IPR petition and joinder motion, does not by itself make LG an RPI to Facebook’s IPR.” The Court further explained that the record lacks any evidence to establish that LG and Facebook had any preexisting relationship. Moreover, the Court clarified that co-petitioners are not automatically considered RPIs or privies of one another.

Second, the Court addressed Uniloc’s challenge of the Board’s finding that Facebook was not estopped from challenging claim 7 even though it was estopped from challenging the other claims in the Apple IPR. Uniloc argued that estoppel should also apply to claim 7 because it depends from claim 1, which Facebook was estopped from challenging. The Court rejected Uniloc’s argument and affirmed the Board’s decision, explaining that the language of ‎§ 314(d) ‎limits estoppel to claims previously challenged, and where claim 7 was not at issue in Apple’s IPR, Facebook could not be properly estopped from challenging it.

Third, the Court addressed Uniloc’s challenges to the Board’s obviousness determinations. The Court rejected Uniloc’s arguments and affirmed the Board’s decisions as supported by substantial evidence.

Finally, the Court addressed Uniloc’s challenges to the Board’s claim construction of the term “attaches to.” The court rejected Uniloc’s argument and affirmed the Board’s decision, explaining that the claims and written description provided sufficient support for the claim construction.

A copy of the opinion can be found here.

By Annie White

ALSO THIS WEEK

Mylan Laboratories, Ltd. v. Janssen Pharmaceutica, N.V., Appeal No. 2021-1071 (Fed. Cir. Mar. 12, 2021)

On a petition for writ of mandamus, the Federal Circuit refused to compel the PTAB to initiate inter partes review proceedings concerning one of Janssen’s patents. Mylan petitioned for IPR, and the PTAB declined to review the patent in light of two pending litigations that were likely to reach final judgment prior to any ultimate PTAB decision. Mylan both appealed the denial and also filed a mandamus petition. The Federal Circuit held it lacked jurisdiction to review the denial of a PTAB decision not to institute inter partes review pursuant to Section 314(d). Concerning the mandamus petition, the Court found that it has mandamus jurisdiction pursuant to the All Writs Act. However, it declined to issue mandamus relief, deferring to the Director’s discretion to deny IPR petitions, and finding that Mylan had not met the high bar required for mandamus relief.

A copy of the opinion can be found here.

By Nika Aldrich

DePuy Synthes Products, Inc. v. Veterinary Orthopedic Implants, Inc., Appeal No. 2020-1514 (Fed. Cir. Mar. 12, 2021)

The Federal Circuit affirmed the District Court’s order to unseal Depuy’s amended complaint. The Court briefly touched on its jurisdiction holding that the collateral order doctrine confers jurisdiction to the Federal Circuit in this matter. On the merits, Veterinary Orthopedic Implants (“VOI”) objected to the district court’s order arguing that the amended complaint must remain sealed because it disclosed VOI’s trade secrets that were subject to the protective order between the parties. At issue was whether VOI had offered “a strong justification to overcome the presumption of public access.” As an initial matter, the Court held that the protective order could not supersede the right of public access without further justification. Specifically, “VOI must establish the existence of harm flowing from the disclosure of such information,” such as from the disclosure of trade secrets. Applying Florida law, the Court held that VOI had failed to establish that the information at issue, the identity and other information about VOI’s manufacturer, were trade secret. Finding no other basis to constrain the public’s right of access to the amended complaint, the Court affirmed. 

A copy of the opinion can be found here.

By Bazsi Takacs

In Re: Board of Trustees of the Leland Stanford Junior University, Appeal No. 2020-1012 (Fed. Cir. Mar. 11, 2021)

In an appeal brought by Stanford University from a Patent Trial and Appeal Board decision affirming an Examiner's rejection of the claims as covering patent ineligible subject matter, the Court concluded that claim 1 is directed to a patent ineligible mathematical algorithm. Additional limitations amounted to only “apply it” on a computer. Regarding Stanford’s argument that claim 1 enables a scientist to ascertain more haplotype information than was previously possible, the Court pointed out that a novel mathematical algorithm is still a mathematical algorithm. As to Stanford’s argument that the Board failed to assess the elements of claim 1 as an ordered combination, the Court pointed out that Stanford failed to explain how that combination of elements moves the claimed subject matter from the abstract into the practical. For these reasons, the Court affirmed the Board’s conclusion that the claims are drawn to patent ineligible subject matter.

A copy of the opinion can be found here.

By Michael A. Cofield

Edgewell Personal Care Brands, LLC v. Munchkin, Inc., Appeal No. 2020-1203 (Fed. Cir. Mar. 9, 2021)

In this case, the Federal Circuit vacated-in-part and reversed-in-part a summary judgment decision finding non-infringement of two patents covering refill cassettes for appellant Edgewell’s Diaper Genie diaper pail system. In the process, the Court re-affirmed that apparatus claims are generally to be construed according to what the apparatus is, not what the apparatus does, and articulated limitations on the vitiation doctrine in analyzing infringement under the doctrine of equivalents.

Edgewell’s U.S. Patent No. 8,899,420 covered refill cassettes with “a clearance in a bottom portion of the central opening,” which provided a chamfered edge to fit with a ring inside the pail, ensuring the cassettes could not be installed upside-down. On summary judgment, the district court construed the “clearance” limitation to require space between the pail ring and the cassette after the cassette was properly installed, and found non-infringement of the ’420 patent because there was no space between Munchkin’s cassette and the pail after the cassette was installed. The Federal Circuit found this construction to be erroneous, holding that “it is usually improper to construe non-functional claim terms in apparatus claims in a way that makes infringement or validity turn on the way an apparatus is later put to use,” which is inconsistent with the patent system’s notice function, and also noted that the specification included embodiments in which the chamfered edge engaged directly with the pail. Because it was based on an erroneous construction, the Court vacated this aspect of the district court’s decision and remanded for further proceedings.

Edgewell’s U.S. Patent No. 6,974,029 covered refill cassettes with an annular cover disposed over the cassette housing, the cover having several portions including a “tear-off section” that could be removed to permit access to the bag tubing within. Munchkin’s accused refill cassettes had a cover with a separate shrink wrap or blister cap element to access the tubing, and after the district court construed the cover limitation to require the “tear-off section” to be part of the same structure as the rest of the cover, Edgewell limited its allegations on the ’029 patent to infringement under the doctrine of equivalents. The district court found that this application of the doctrine of equivalents would effectively vitiate the “tear-off section” limitation, and granted summary judgment of non-infringement to Munchkin. The Federal Circuit disagreed, cautioning that the vitiation inquiry should not be short-cut by framing it as a binary choice between whether a limitation is present or not, as vitiation is instead a legal determination of a lack of equivalence based on the evidence and theory presented. Pointing to expert testimony that Munchkin’s shrink wrap or blister cap elements performed the same function, in the same way, to achieve the same result as the claimed tear-off section, the Federal Circuit found that disputed issues of material fact precluded summary judgment on the ’029 patent, and reversed this aspect of the district court’s decision.

A copy of the opinion can be found here.

By Jason Wrubleski

 

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