The Patent Trial and Appeal Board (PTAB) partially dismissed Facebook, Inc. and WhatsApp Inc. from an inter partes review (IPR) proceeding on estoppel grounds, where both parties were involved in an earlier proceeding on the same challenged claims.
On May 14, 2018, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) Final Written Decision in an inter partes review (IPR) proceeding holding all claims of Anacor Pharmaceuticals, Inc.’s (“Anacor”) U.S. Patent No. 7,582,621 unpatentable for obviousness. The single claim addressed on appeal related to a method of using an oxaborole known as “tavaborole” to treat onchomycosis (a nail infection) caused by a dermatophyte. Dermatophytes are a type of fungus responsible for 90 percent of all cases of onchomycosis.
The Federal Circuit recently upheld a decision by the Patent Trial and Appeal Board (PTAB) which found that inter partes review (IPR) proceedings challenging patents related to marine seismic survey systems were not time-barred.
In an April 12, 2018 decision, the District Court for the District of Delaware held that a change in the primary reference of an obviousness combination that was denied institution by the Patent Trial and Appeal Board (PTAB) did not alter the scope of inter partes review (IPR) estoppel. 35 U.S.C. § 315(e)(2) provides that the petitioner in an IPR is estopped from raising in another proceeding any ground for invalidity that it raised, or reasonably could have raised, during the IPR. Although there is disagreement among district courts about the scope of estoppel, there is general agreement that a party is not estopped from raising grounds that were set forth in its petition, but not instituted for trial by the PTAB (i.e., non-instituted grounds). Some courts have limited the scope of estoppel to non-instituted grounds; others have gone further and applied IPR estoppel even to grounds that were not raised—but could have been raised—in the petition (i.e., non-petitioned grounds).
Requests for rehearing at the Patent Trial and Appeal Board (the “Board”) are not uncommon; however, the Board rarely grants them. One reason for this result is the high standard applied to reverse a prior decision—abuse of discretion. In this case, however, the petitioner, met its burden by arguing that the Board, “led to error by [the] Patent Owner,” based its decision on an erroneous interpretation of the law. The Board granted rehearing, and instituted inter partes review on one of the three grounds in the petition.
On August 1, 2016, Canfield Scientific, Inc. filed a civil action in the District of New Jersey against Melanoscan, LLC, seeking a declaratory judgment of non-infringement of U.S. Patent No. 7,359,748 (“the ’748 Patent”). In response, Melanoscan asserted multiple claims of the ’748 Patent in a counterclaim for infringement. In reply, on June 30, 2017, Canfield filed an “Answer and Counterclaim,” in which it sought to invalidate the asserted claims. Nearly three months later, on September 21, 2017, Canfield additionally filed a petition for inter partes review (IPR) with the Patent Trial and Appeal Board (“the Board”) challenging the validity of the same claims. Before reaching the merits, the Board addressed whether institution of Canfield’s IPR was barred under 35 U.S.C. § 315—which governs the relationship of IPRs to other proceedings or actions—due to Canfield’s prior invalidity challenge in its declaratory judgment action.
In an order issued on April 4, 2018, Judge Lynn granted plaintiff ZitoVault’s motion for summary judgment under 35 U.S.C. 315(e)(2), holding that defendant IBM is estopped from asserting invalidity defenses based on prior art known to IBM when it filed its first petition for inter partes review.
On March 23, 2018, a district court judge issued a preliminary injunction requiring the defendants to withdraw their petitions for inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB). The court granted plaintiff’s motion for an injunction based on its finding that the terms of the parties’ license agreement require that any challenges to the validity of the licensed patents be litigated in either San Francisco or Orange County, California.