[co-author: Sima Lotfi]

Petitioner Allowed to Proceed in “Understudy Role”

In American Honda Motor Co., Inc. v. Neo Wireless, LLC, IPR2023-0791 (P.T.A.B. March 30, 2023), American Honda Motor Co., Inc. (“Honda”) filed a “copycat” Petition requesting institution of an inter partes review of claims 1–14 of U.S. Patent No. 10,075,941. Concurrently, Honda filed a Motion for Joinder (Paper 2) seeking to be joined as a party to Volkswagen Group of America, Inc. v. Neo Wireless, LLC, IPR2022-01537 (“Volkswagen IPR”).

The Board determined that institution was warranted on the same grounds instituted in Volkswagen IPR because it was “substantively identical” to the Volkswagen IPR petition and “it present[ed] no new grounds of unpatentability.” Paper 11 at 9. Both petitions challenged the same claims, on the same grounds, using the same prior art. Id. at 11. The Board also granted Honda’s Motion for Joinder because Honda showed that joinder would not impact the trial schedule. Id.

Notably, the Board limited Honda’s participation in the Volkswagen IPR to that of an “understudy role,” meaning Honda cannot not make substantive filings, is bound by the filings of the Volkswagen IPR petitioner, cannot present oral argument unless the issue solely involves Honda, cannot cross-examine a witness or seek discovery unless it solely involves Honda, and cannot present expert testimony beyond that which was submitted by the Volkswagen IPR petitioner. Id. at 13. In essence, unless an issue solely involves Honda, it cannot actively participate in the IPR.

Takeaway: When pursuing a motion for joinder of a “substantially identical” petition, Petitioners should be aware that they may not be allowed an active role in the joined proceeding, but rather will be bound by the arguments and evidence put forth by the primary IPR petitioner.

PTAB Designates Decision on Priority Claims Precedential

The Board in November 2023 designated a portion of Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (P.T.A.B. March 10, 2023) as precedential. In the precedential portion of the decision, Section II.E.3, the Board distinguished priority rules applicable to pre-AIA patents from the priority rules applicable to post-AIA patents. The Board specifically addressed the Federal Circuit’s decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). In Dynamic Drinkware the Court held that a reference patent’s claims must have adequate written description support in its provisional application to be entitled to that provisional application’s earlier filing date for prior art purposes under pre-AIA 35 U.S.C. § 102(e). In its Penumbra decision, the Board rejected extending the Dynamic Drinkware holding to post-AIA patents, anchoring its reasoning in the fact that the language that existed in pre-AIA § 102(e) was substantially overwritten by the corresponding language in AIA § 102(a)(2)(d). The Board’s holding lowers the burden for petitioners seeking to rely on provisional and foreign filing dates for asserted references, as the challenger only needs to meet the ministerial requirements of 35 U.S.C. §§ 119, 120, and show that the subject matter at issue is described in the provisional application, rather than having to show written description support for a reference patent’s claim.

Takeaway: This decision provides that the effective prior art date of a reference patent depends on whether the patent being challenged is subject to the AIA or pre-AIA versions of the patent statute. This decision, which is currently on appeal to the Federal Circuit (Nos. 24-1130 and 24-1131), also illustrates the importance for Petitioners to carefully set out support for relevant disclosures in all priority documents that will used to establish the effective date of prior art.

Petition Must Set Forth Arguments with Specificity and Clarity

In Uber Technologies, Inc. v. SurgeTech LLC, IPR-2023-00737, Paper 7 (P.T.A.B. Oct. 6, 2023), the PTAB denied institution of inter partes review for lack of particularity in Uber’s petition. While the petition identified challenges to each claim in dispute and included evidentiary citations with each challenge, the Board held that “[r]ather than present its challenges in a concise and understandable manner, with clear rationale to support its challenges, the Petition simply reproduces large excerpts from multiple references while incorporating by reference an 805-page expert declaration.” Id. at 11. As an example, one challenge raised in the petition spanned 57 pages and cited over 300 paragraphs from the expert declaration. Similarly, the petition used a single omnibus chart to summarize what it alleged to be twelve separate challenges. Id. at 12.

Further emphasizing the importance of specificity and clarity, in Netflix, Inc. v. DivX, LLC, the Federal Circuit upheld the Board’s decision to deny Netflix’s petitions for inter partes review on the basis that Netflix failed to make alternate arguments in its petition and therefore could not accuse the Board of failing to consider said arguments. 84 F.4th 1371, 1380-82 (Fed. Cir. 2023) (precedential). Acknowledging that “the Board walks a fine line when interpreting the scope of a petition and determining what arguments have been fairly presented,” the Federal Circuit denied Netflix’s assertions that it made alternative arguments in its petitions through the citations of certain evidence, such as a block quote from a cited prior art reference presenting two embodiments. Id. at 1377-78. In its decision, the Federal Circuit emphasized that “it is the petitioner’s burden to make clear when alternative arguments are being presented and to sufficiently expound on each one. The Board should not have to work as hard as Netflix wants to identify all arguments fairly presented in a petition.” Id. at 1380.

Takeaway: Petitioners must carefully draft alternate arguments with specificity or run the risk of having their petitions denied. Petitioners drafting petitions for inter partes review should clearly signpost alternative arguments, separately presenting each argument and its supporting evidence.

Federal Circuit Confirms PTAB Authorized to Issue Final Written Decision After Statutory Deadline

In Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc., 86 F.4th 1338 (Fed. Cir. 2023), Purdue appealed the Board’s decision finding the challenged claims of its patent unpatentable. Purdue, in part, argued that the Board did not have the authority to issue the Final Written Decision because it was issued more than one year and six months from institution, contrary to 35 U.S.C. § 326(a)(11) and 37 C.F.R. § 42.200(c). In a case of first impression, the Federal Circuit rejected Purdue’s argument, holding that “the Board has authority to issue a Final Written Decision even after the deadline proscribed in the statute has passed, absent any contrary indication in the language, structure, or legislative history of the statute.” Purdue Pharma L.P., 86 F.4th at 1342.

Purdue generally argued that the statute contains language that should have barred the Board from issuing its Final Written Decision. First, the Federal Circuit rejected Purdue’s argument that “the use of ‘shall’ and ‘requiring’ in section 326(a)(11) deprives the Board of authority to issue a Final Written Decision after the deadline” as “contrary to the Supreme Court’s decision in Brock.” Id. at 1342–43 (citing Brock v. Pierce Cnty., 476 U.S. 253, 266 (1986)). Second, the Federal Circuit rejected Purdue’s argument that the use of “negative words” in § 326(a)(11) such as “not later than 1 year” and “by not more than 6 months” indicate that the act must happen during that time. Instead, the Federal Circuit explained that this language “created ‘timing provisions [that] are at best precatory rather than mandatory.” Id. at 1343 (alterations in original). Third, the Federal Circuit rejected Purdue’s argument that since “section 326(a)(11) is linked to the Board’s jurisdictional grant in section 6 of 35 U.S.C.,” a breach causes the Board’s jurisdiction to expire. Id. The Federal Circuit held that the language of the statute “does not rise to the level of a clear statement that section 326(a)(11) is jurisdictional.” Id. Fourth, the Federal Circuit rejected Purdue’s argument that “the exceptions in section 326(a)(11) for ‘good cause’ and ‘joinder’ show those are the only two limited circumstances under which the Board may issue a Final Written Decision after the one year deadline.” Id. The Federal Circuit held that “exceptions to the deadline do not strip the Board of authority to issue a Final Written Decision after the deadline passed.” Id. at 1344. Fifth, the Federal Circuit explained that there are other provisions of the AIA that use quite different language from the pertinent sections here to bar action after deadlines pass. Id.

The Federal Circuit further explained that the Board may not ignore deadlines as it wishes, and that Mandamus is the appropriate remedy and is available immediately upon the Final Written Decision deadline passing. Id. at 1345. Purdue did not seek mandamus in this case.

Takeaway: The Board is not precluded from issuing a Final Written Decision past the deadline provided in 35 U.S.C. § 326(a)(11). If a party files a petition for a writ of mandamus to compel the Board to issue a decision, the petition should be filed as soon as the deadline for decision passes.

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