PTAB Estoppel Decisions Under § 315(e)(1) Occurring After Institution Are Reviewable on Appeal

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On March 9, in Uniloc 2017 LLC v. Facebook Inc., the Federal Circuit held that the no-appeal provision of 35 U.S.C. § 314(d) does not preclude appellate review of the PTAB’s estoppel determination under section 315(e)(1) when “the alleged estoppel-triggering event occurred after institution.” As stated in section 315(e)(1), a petitioner “may not request or maintain” an inter partes review (IPR) proceeding as to any ground that the petitioner “raised or reasonably could have raised” in a prior IPR that resulted in a final written decision regarding the same patent claim.

Uniloc owns U.S. Patent No. 9,995,433 (“the ’443 patent”), which was challenged in IPR petitions filed by several different parties including Apple, Facebook, and LG Electronics. In relevant part, Apple had filed an initial IPR petition challenging the ’443 patent, and Facebook subsequently filed two petitions of its own. While both Facebook petitions were still pending, the PTAB instituted Apple’s IPR. Shortly after this institution decision, Facebook elected to file a substantively identical follow-on petition and moved to join Apple’s IPR, which was granted. Separately, LG filed two IPR petitions that were identical to Facebook’s two initial IPR petitions and moved to join those proceedings before the institution decisions, which were also granted.

Then, after the PTAB had instituted both Facebook IPRs, the PTAB issued a final written decision in the Apple IPR upholding the patentability of all challenged claims of the ’443 patent. As a direct result of Facebook having joined the Apple IPR, the PTAB issued a decision in one of the Facebook IPRs partially dismissing Facebook because it was estopped under section 315(e)(1) as to all claims already upheld in the Apple proceeding (i.e., claims 1–6 and 8). Despite Uniloc’s objections, the PTAB allowed Facebook to remain in that IPR to challenge claim 7 of the ’443 patent. Specifically, the PTAB found that section 315(e)(1) estoppel provisions only applied to grounds that were raised or reasonably could have been raised “with respect to that claim,” which had not included claim 7. The PTAB later issued its final written decision (as a consolidated decision for both Facebook IPRs), finding that all challenged claims were unpatentable as obvious.

Uniloc sought rehearing of both Facebook IPRs, arguing in part that the IPR involving the estoppel question should have been terminated once the original petitioner—Facebook—had been deemed estopped. Since “[j]oined parties are privy to a petitioner,” and LG and Facebook were joined parties, Uniloc argued LG was likewise estopped. The PTAB denied the request.

Uniloc appealed and argued in part that the PTAB erred in not finding LG estopped from challenging claims 1–8 due to its purported relationship with Facebook as a privy or real party in interest. However, before addressing the merits of Uniloc’s challenge, the court first assessed whether the no-appeal provision of section 314(d) should apply. After discussing a number of prior decisions concerning section 314(d), the Federal Circuit ultimately found that since the estoppel issue had not arisen until after the institution decision in the Facebook IPRs, section 314(d) did not bar appellate review, holding “[W]e see no indication that § 314(d) precludes judicial review of the [PTAB’s] application of § 315(e)(1)’s estoppel provision in this case, in which the alleged estoppel-triggering event occurred after institution.”

Reaching the merits of Uniloc’s estoppel challenge, the court rejected Uniloc’s contention that a joined party is inherently privy of the original petitioner and affirmed the PTAB’s finding that LG was not a real party in interest or privy of Facebook absent evidence showing that either party exercised control over the other party’s decision to file a petition or that the parties coordinated their challenges.

The court also held that the PTAB had correctly found Facebook was not estopped from challenging claim 7, even though claim 7 depended from claim 1, which Facebook was estopped from challenging by the final written decision in the Apple IPR. The court reasoned that because claim 7 was not challenged by Apple and because Facebook could not bring its own challenge to claim 7 in the Apple proceeding via joinder under section 315(c), no estoppel arose with respect to that claim.

The court also affirmed the PTAB’s obviousness determinations as supported by substantial evidence.

This decision provides further guidance on the contours of the section 314(d) no-appeal provision and which specific determinations by the PTAB may be appealed. This has been an ever-expanding body of case law, beginning with the Supreme Court’s decision in Cuozzo Speed Techs., LLC v. Lee.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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