In New Vision Gaming & Development, Inc., v. SG Gaming, Inc., [2020-1399, 2020-1400](May 13, 2021) the Federal Circuit vacated PTAB decisions that U.S. Patent Nos. 7,451,987 and 7,325,806, as well as proposed substitute claims, are patent ineligible under 35 U.S.C. § 101, and remanded the case for further proceedings consistent with Arthrex.  The Federal Circuit said that because Arthrex issued after the Board’s final-written decisions and after New Vision sought Board rehearing, New Vision had not waived its Arthrex challenge by raising it for the first time in its opening brief before the Court.

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Judge Newman agreed that Arthrex applied but dissented because the Court did not address the forum selection clause in the license between the parties.  The parties agreed that “any dispute between any of the parties that cannot be resolved amicably” should be resolved in the state and federal courts in the State of Nevada, and thus Judge Newman argued that the forum question requires resolution, for if the parties are committed to a Nevada forum instead of the PTAB, there is no basis for new PTAB proceedings on remand.

Thus, while I Judge Newman agreed that the Board’s decision must be vacated under Arthrex, she respectfully dissented from remand without resolving the issue of forum selection.

In Network-1 Technologies, Inc. v. Hewlett-Packard Co., [2018-2338, 2018-2339, 2018-2395, 2018-2396] (September 24, 2020), the Federal Circuit affirmed-in-part and reversed-in-part the district court’s claim construction and remanded, vacated the district court’s JMOL on validity and remanded, and affirmed the district court’s decision with respect to improper claim broadening.

U.S. Patent No. 6,218,930, titled “Apparatus and Method for Remotely Powering Access Equipment over a 10/100 Switched Ethernet Network,” discloses an apparatus and methods for allowing electronic devices to automatically determine if remote equipment is capable of accepting remote power over Ethernet.

On appeal Network-1 argued that the district court incorrectly construed the claim terms “low level current” and “main power source,” and that this error entitled it to a new trial on infringement. The Federal Circuit agreed that the district court erred in its construction of “main power source,” and as a result of that error, Network-1 was entitled to a new trial on infringement.

On appeal HP argued that the district court erroneously granted JMOL with respect to the ’930 patent’s validity based on its determination that HP was estopped under 35 U.S.C. § 315(e) from presenting obviousness challenges as a consequence of its joinder to the Avaya IPR. The district court reasoned that HP reasonably could have raised” its invalidity arguments during the IPR that HP joined. The district court stated that allowing HP to raise arguments “that it elected not to raise during the IPR would give it a second bite at the apple and allow it to reap the benefits of the IPR with-out the downside of meaningful estoppel.

The Federal Circuit began by point out that under 35 U.S.C. § 315(e) party is only estopped from challenging claims in the final written decision based on grounds that it “raised or reasonably could have raised” during the IPR. However, the Federal Circuit noted, because a joining party cannot bring with it grounds other than those already instituted, that party is not statutorily estopped from raising other invalidity grounds.

In fact, HP initially tried to join the IPR and raise additional grounds, which the PTAB correctly denied, it was HP’s second attempt to join the IPR based only on the grounds already instituted, that was granted.

Thus, since party like HP that joins an IPR cannot raise any additional grounds, it is not estopped as to any ground not actually raised in the IPR. The Federal Circuit observed that its not a second bite at the apple, when the first bite was denied. The Federal Circuit remanded the case rather than simply reversing because there was an outstanding request for a new trial.

On appeal HP argued that by adding two dependent claims during reissue, the Network-1 improperly broadened the original claim from which they depend. The Federal Circuit rejected the idea that adding dependent claims broadens the underlying independent claim, and thus affirmed the district court’s determination that claim 6 was not improperly broadened.

In Facebook, Inc. v. Windy City Innovations, LLC, [2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537, 2018-1540, 2018-1541] (September 4, 2020), the Federal Circuit affirmed-in-part, vacated-in-part, and remanded the Board’s final written decisions on the ’245 and ’657 patents in IPR2016-01156 and IPR2016-01159, affirmed the Board’s final written decision on the ’552 patent in IPR2016-01158, and affirmed-in-part the Board’s final written decision on the ’356 patent in IPR2016-01157; and dismissed as moot Facebook’s appeal of the Board’s final written decision on the ’356 patent with respect to claims 14 and 33.

Windy City Innovations filed a complaint accusing Facebook of infringing U.S. Patent Nos. 8,458,245, 8,694,657, 8,473,552, and 8,407,356 (“the ’356 patent”). The ’245, ’657, ’552, and ’356 patents share a common specification, claim priority to the same parent application, and generally relate to methods for communicating over a computer-based network.

Exactly one year after being served with Windy City’s complaint Facebook timely petitioned for inter partes review (“IPR”) of several claims of each patent (IPR2016-01156, IPR2016-01157, IPR2016-01158, IPR2016-01159). At that time, Windy City had not yet identified the specific claims it was asserting. The PTAB instituted IPR of each patent. After Windy City identified the claims it was asserting in the district court, Facebook filed two additional petitions for IPR (IPR2017-00659, IPR2017-00709) of additional claims of the ’245 and ’657 patents, along with motions for joinder to the already-instituted IPRs on those patents. By the time of these filings, the one-year time bar of §315(b) had passed, but the PTAB nonetheless instituted Facebook’s two new IPRs, granted Facebook’s motions for joinder, and terminated the new IPRs.

The Board delivered a mixed result, holding that Facebook had shown by a preponderance of the evidence that some of the challenged claims are unpatentable as obvious but had failed to show that others were unpatentable as obvious. Many of the claims the Board found unpatentable were claims only challenged in the late-filed petitions. Facebook appealed, and Windy City cross-appealed on the Board’s obviousness findings and challenging the Board’s joinder decisions allowing Facebook to join its new IPRs to its existing IPRs and to include new claims in the joined proceedings.

The Federal Circuit held that the Board erred in its joinder decisions in allowing Facebook to join itself to a proceeding in which it was already a party, and also erred in allowing Facebook to add new claims to the IPRs through that joinder. Because joinder of the new claims was improper, it vacated the Board’s final written decisions as to those claims. However the Federal Circuit lacked authority to review the Board’s institution of the two late-filed petitions, so it remanded them to the Board to consider whether the termination of those proceedings finally resolved them.

The Federal Circuit began by rejecting Facebook’s argument that the Board’s joinder decision was not reviewable. The Federal Circuit said that the plain language of § 315(c) requires two different decisions. First, the statute requires that the Director determine whether the joinder applicant’s petition for IPR “warrants” institution under § 314. The Federal Circuit said that it may not review this decision, whether for timeliness or to consider whether the petitioner is likely to succeed on the merits. Second, to effect joinder, § 315(c) requires the Director to exercise his discretion to decide whether to “join as a party” the joinder applicant. The statute makes clear that the joinder decision is made after a determination that a petition warrants institution, thereby affecting the manner in which an IPR will proceed. The joinder decision is a separate and subsequent decision to the intuition decision. Nothing in § 314(d), nor any other statute, overcomes the strong presumption that the Federal Circuit has jurisdiction to review that joinder decision.

Windy City argued that § 315(c) does not authorize same-party joinder and that it does not authorize joinder of new issues material to patentability, such as new claims or new grounds. Facebook disputed both points, arguing that § 315(c) authorizes same-party joinder and that it does not prohibit joinder of new issues. The Federal Circuit agreed with Windy City on both points. The clear and unambiguous text of § 315(c) does not authorize same-party joinder, and does not authorize the joinder of new issues. Beginning with the statutory language, § 315(b) articulates the time-bar for when an IPR “may not be instituted.” 35 U.S.C. § 315(b). But § 315(b) includes a specific exception to the time bar. By its own terms, “[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).” Subsection (c) provides that after an inter partes review has been instituted, the Director, in his or her discretion, “may join” “as a party to that inter partes review” “any person” who has filed “a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.

The Federal Circuit held that the clear and unambiguous meaning of § 315(c) does not authorize joinder of two proceedings, and does not authorize the Director to join a per-son to a proceeding in which that person is already a party. The Federal Circuit found the Board’s interpretation of § 315(c) is contrary to the unambiguous meaning of the statute for a second reason. The Federal Circuit said that the language in §315(c) does no more than authorize the Director to join 1) a person 2) as a party, 3) to an already instituted IPR. This language does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding. §315(c) authorizes joinder of a person as a party, not “joinder” of two proceedings.

In Uniloc 2017 LLC v. Hulu, LLC, [2019-1686] (July 22, 2020) the Federal Circuit affirmed the PTAB’s denial of Uniloc 2017’s motion to amend on the grounds that the substitute claims were unpatentable under 35 USC 101.

During an IPR the patent owner may file one motion to amend the patent, canceling any challenged patent claim and for each challenged claim, proposing a reasonable number of substitute claims. § 316(d)(1). At the conclusion of the IPR, the Director shall issue and publish a certificate incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable. § 318(b).

In its Final Written Decision, the PTAB, in addition to explaining why the challenged original claims are unpatentable, denied Uniloc’s Motion to Amend the claims, concluding that Hulu had shown by a preponderance of the evidence that the Substitute Claims are directed to non-statutory subject matter under 35 U.S.C. § 101. Ineligibility was the sole ground on which the PTAB denied the motion to amend.

Rejecting the argument that the case was moot, the Federal Circuit considered PTAB authority to consider § 101 eligibility for proposed
substitute claims, concluding that the PTAB was authorized by statute to assess Uniloc’s proposed Substitute Claims for eligibility under § 101 and,
finding the claims ineligible, to deny the motion to amend.

Uniloc argued that the PTAB was limited in its review of proposed
substitute claims to anticipation or obviousness, as provided by § 311(b). However the Federal Circuit found that the PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an
IPR, and that it may consider § 101 eligibility. The Federal Circuit said that this determination was supported by the text, structure, and history of
the IPR Statutes, which indicate Congress’s unambiguous intent to permit the PTAB to review proposed substitute claims more broadly than those bases provided in § 311(b).

The Federal Circuit said that the IPR Statutes plainly and repeatedly require the PTAB to determine the “patentability” of proposed substitute claims. The Federal Circuit said that Congress did not intend §311 to constrain the PTAB’s review of proposed substitute claims to anticipation and obviousness, pursuant to § 102 and § 103, because §311 is confined to the review of existing patent claims, not proposed ones. The Federal Circuit said that the structure and legislative history of the IPR Statutes support this conclusion, as section 311 applies to the petition phase of the proceedings, and not to a separate adjudication-stage provision, such as § 316. Finally, the Federal Circuit found support in the IPR statute’s legislative history.

The Federal Circuit concluded that the PTAB can consider §101 when considering amended or substitute claims in an IPR (and no doubt §112 as well).

In Cochlear Bone Anchored Solutions AB, v. Oticon Medical AB, [2019-1105, 2019-1106] (May 15, 2020), the Federal Circuit affirmed the PTAB’s determination that claims 4-6 and 11-12 of U.S. Patent No. 7,043,040, that claims 7-9 were not unpatenable, and vacated and remanded the determination that claim 10 was not unpatentable.

With respect to claims 4-6 and 11-12, Cochlear argued that the preamble “for rehabilitation of unilateral hearing loss” should have been treated as a claim limitation.  The Federal Circuit noted that in general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim. But preamble language merely extolling benefits or features of the claimed invention does not limit the claim scope without clear reliance on those benefits or features as patentably significant.  A preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.  The Federal Circuit concluded that the preamble was merely a statement of intended use of the claimed hearing aid; it identified no structure for the apparatus claimed. Moreover, this use itself is not an inventive or patentably distinct aspect of the claimed invention, as “rehabilitation of unilateral hearing loss” was a conventional use of prior art bone-anchored hearing aids.  Further, the bodies of the claims contain the only descriptions of the structure for the hearing aid, with no additional structure furnished by the preamble.

With respect to claims 4-5, Cochlear argued that it was error for the Board to conclude that “specifically adapted to” had its ordinary meaning.  The Federal Circuit rejected this argument, noting that to the extent that Cochlear was suggesting that the language requires a particular intent or objective of a hearing-aid designer or manufacturer, this was incorrect.  The Federal Circuit has held that the claim term “adapted to” generally means “made to,” “designed to,” or “configured to” perform the stated function, without introducing a subjective element into the construction of the phrase.  To the extent that Cochlear is suggesting an objective characteristic of the configuration, it has not shown overbreadth of the Board’s ordinary-meaning construction. With respect to claims 7-10, the Board determined that it could not conduct a prior-art analysis of these claims because they contained means-plus-function elements.  The Federal Circuit held that the  Board did not err as to claims 7–9, but did err as to claim 10.  The Federal Circuit claim 10 is different in a crucial respect. It does not contain a required claim element in means-plus-function form. Claim 10 recites a “directivity means comprising at least one directivity dependent microphone and/or signal processing means in the electronic circuitry.  Thus claim 10, unlike the other means-plus-function claims, also describes a stand-alone alternative to the signal processing means: a directivity dependent microphone, which is a clear structure for performing the claimed directivity means.  The Board relied entirely on the presence of the signal-processing-means alternatives in the claim to deem a prior-art analysis impossible, and this was error.  Even if claim 10 is indefinite, such a conclusion would not imply that it is incapable of being compared to prior art to determine if one of its alternatives is anticipated or would have been obvious on the grounds asserted.

In Facebook, Inc., v. Windy City Innovations, LLC, [2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537, 2018-1540, 2018-1541] (March 18, 2020) the Federal Circuit hold that the Board erred in allowing Facebook to join itself to a proceeding in which it was already a party, and also erred in allowing Facebook to add new claims to the IPRs through that joinder.

Exactly one year after being served with Windy City’s complaint for infringement of U.S. Patent Nos. 8,458,245, 8,694,657, 8,473,552, and 8,407,356, Facebook petitioned for inter partes review of several claims of each of the patents.  Seven  months later, after Windy City identified the claims it was asserting, Facebook filed two additional petitions for IPR of additional claims of two of the challenged patents, together with a motion for joinder.  Although this was now well more than a year after Facebook had been served, the Board nonetheless instituted Facebook’s two new IPRs, and granted Facebook’s motions for joinder.

The Federal Circuit examined the statutory language and concluded that joinder was not proper.  It noted that the plain language of § 315(c) indicates that the exception to the time bar offered by the joinder provision only applies if there is an instituted IPR, meaning that a first petition must have been timely under § 315(b), among other requirements.   It went on to note that subsection (c) then provides that after an inter partes review has been instituted, the Director, in his or her discretion, “may join” “as a party to that inter partes review” “any person” who has filed “a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.”

The Federal Circuit observed that the Board was operating under the premise that § 315(c) authorizes two proceedings to be joined, rather than joining a person as a party to an existing proceeding.  The Federal Circuit said that the Board’s understanding of § 315(c) is contrary to the plain language of the provision. Section 315(c) authorizes the Director to “join as a party to [an IPR] any person who” meets certain requirements, i.e., who properly files a petition the Director finds warrants the institution of an IPR under § 314. The Federal Circuit said that no part of § 315(c) provides the Director or the Board with the authority to put two proceedings together. That, the Federal Circuit pointed out, is the subject of § 315(d), which provides for “consolidation,” among other options, when “[m]ultiple proceedings” involving the patent are before the PTO.

The Federal Circuit admitted the possibility that the Board was in fact intending to join Facebook as a party to its previously instituted IPRs, and not joining the IPR proceedings themselves, but found that the clear and unambiguous language of § 315(c) does not.  The Federal Circuit said it would be an extraordinary usage of the term “join as a party” to refer to persons who were already parties.  The Federal Circuit concluded that a party cannot logically be “join[ed] as a party” in a proceeding if it is already a party to that proceeding.  The Federal Circuit held that the clear and unambiguous meaning of § 315(c) does not authorize joinder of two proceedings, and does not authorize the Director to join a person to a proceeding in which that person is already a party.

In Apple Inc. v. Andrea Electronics Corp., [2018-2382, 2018-2383] (February 7, 2020), the Federal Circuit vacated the Board’s decision in a first IPR on U.S. Patent No. 6,363,345 because the the Board erred in refusing to consider Apple’s reply arguments, but in the second IPR on the patent, it affirmed the determination that claims 5-9 were not invalid.

The Board’s determinations that a party exceeded the scope of a proper reply are reviewed for abuse of discretion. The Federal Circuit said that a reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response. Thus, it had to determine whether we must consider: whether the petitioner’s reply brief was responsive to arguments originally raised in its petition; or whether the reply arguments are responsive to arguments raised in the patent owner’s response brief.

The Federal Circuit noted tat Apple’s legal ground did not change in its reply— its reply still asserted that claims 6–9 would have been obvious over the same references. Further, Apple’s arguments were not the types of arguments that we have previously found to raise a “new theory of unpatentability.” The Federal Circuit noted that Apple’s reply does not cite any new evidence or unidentified portions of the references, but merely demonstrated another example of the same algorithm to further explain why the reference discloses the claim elements. The Federal Circuit said that parties are not barred from elaborating on their arguments on issues previously raised.

The Federal Circuit concluded that Apple’s reply squarely responds to the Patent Owner Response.