Case Highlights: PTAB Precedential and Informative Decisions, Director Review Decisions, and Precedential Opinion Panel Decisions

This recurring feature highlights any new PTAB precedential and/or informative decisions, any new substantive Director review decisions, and any new substantive decisions issued by the Precedential Opinion Panel (POP). The current issue includes decisions entered (or designated as precedential) between January 1, 2023 and March 31, 2023.

New PTAB Precedential Decisions

CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (P.T.A.B. Feb. 27, 2023) (precedential) (sua sponte Director review decision regarding Fintiv): Director Vidal vacated and remanded the Board panel’s Institution Decision. The underlying panel decision instituted review, declining to exercise discretion under Fintiv, upon finding that the compelling merits standard was met. The panel did not analyze Fintiv factors 1-5, and for the compelling merits determination merely pointed to the analysis under the institution standard. Director Vidal vacated this decision and remanded to apply the following principles: (1) Board should “only consider compelling merits if they first determined that Fintiv factors 1–5 favored a discretionary denial”; (2) “Merely pointing to its analysis under the lower institution standard is insufficient to demonstrate that the Petition presents a compelling unpatentability challenge.”; and (3)“Board must provide reasoning sufficient to allow the parties to challenge [a compelling merits] finding and sufficient to allow for review of the Board’s decision.”).

Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234, Paper 42 (P.T.A.B. Feb. 24, 2023) (precedential) (Director review decision regarding multiple dependent claims): Director Vidal granted rehearing and modified the Board panel’s Final Written Decision. The underlying panel decision addressed the patentability of multiple dependent claims, i.e., dependent claims which refer back in the alternative to more than one preceding claim. In this case, claims 3-16 each depend from claim 1 or claim 2. The panel determined Petitioner had not shown claim 1 is unpatentable, but determined Petitioner had shown that claim 2 is unpatentable. As to the multiple dependent claims, the panel found that both versions of claims 3-16 were shown to be unpatentable (i.e., as depending from claim 1 and as depending from claim 2), based on the finding that claim 2 was unpatentable. The Patent Owner requested rehearing, arguing that the Board erred in finding claims 3-16 as depending from claim 1 were shown to be unpatentable. Director Vidal granted rehearing, finding that “the plain language of 35 U.S.C. § 112, fifth paragraph, requires that the patentability of a multiple dependent claim is considered separately as to each of its alternatively referenced claims.” Director Vidal modified the panel’s Final Written Decision consistent with this determination.

Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (P.T.A.B. Aug. 24, 2022) (designated precedential Feb. 10, 2023 on sua sponte Director review (Paper 12), regarding weight accorded to conclusory expert testimony): In response to Petitioner’s rehearing request to the Precedential Opinion Panel, Director Vidal affirmed the Board panel’s decision denying institution and designated it as precedential. In the decision designated precedential (Paper 9), the Board denied institution. In considering Petitioner’s evidence, the panel noted that the proffered declaration testimony “merely repeats, verbatim, the conclusory assertion for which it is offered to support.” The panel continued, noting that the declarant “does not cite to any additional supporting evidence or provide any technical reasoning to support his statement. Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” In her decision affirming the panel decision (Paper 12), Director Vidal observed that the “declaration does not provide any technical detail, explanation, or statements supporting why the expert determines that the feature in question was required or would have been obvious based on the prior art disclosure. … Instead, the declaration copies, word-for-word, Petitioner’s conclusory assertions.”

Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124, Paper 14 (P.T.A.B. Dec. 21, 2022) (designated precedential Jan. 4, 2023) (sua sponte Director review decision regarding adverse judgment): Director Vidal vacated and remanded the Board panel’s decision granting adverse judgment. In the underlying panel decision, the Board entered an adverse judgement, based on (1) the Patent Owner not filing a Patent Owner Response and (2) the Patent Owner’s counsel’s statement during a combined Oral Hearing that, “[i]f the Board determines that [Petitioner] have met their burden of proof with respect to those claims [Patent Owner] hasn’t filed any opposition.” Director Vidal vacated the decision, finding that Patent Owner’s statements were not “an unequivocal abandonment of the contest” and “was contingent on the Board determining that Petitioner met its burden of proving by a preponderance of the evidence that the challenged claims are unpatentable.” She remanded for further proceedings.

New Non-Precedential Director Review Decisions (Precedential Decisions are included above)

Wolfspeed, Inc. v. The Trustees of Purdue University, IPR2022-00761, Paper 13 (P.T.A.B. March 30, 2023) (sua sponte Director review decision regarding § 325(d) discretion): In response to Petitioner’s rehearing request to the Precedential Opinion Panel, Director Vidal vacated and remanded the Board panel’s decision denying institution. In the underlying panel decision, the Board exercised discretion under § 325(d), finding that the Petition presented substantially the same art as that presented in an earlier IPR proceeding, and that Petitioner did not identify any material error in the prior decision. Director Vidal vacated the decision, determining that the panel “erred in finding that the prior art asserted in this proceeding is substantially the same prior art asserted in [the] previous proceeding.” Rather, she determined that “a material difference exists” between the art asserted in the two proceedings. In particular, Director Vidal noted that the earlier cited art “includes certain disclosures” not found in the later cited art “that were found to be highly relevant with assessing the obviousness grounds presented” in the earlier Petition. She noted that disclosure “was the basis for the Board’s denial” in the earlier proceeding “because it undercut the Petition’s basis for combining” the references. The art cited in the later proceeding did not contain the same disclosure, and the panel “did not address this material difference in the references” in its determination that they were substantially the same under § 325(d). She remanded for further proceedings.

Google LLC v. Valtrus Innovations Ltd., IPR2022-01197, Paper 12 (P.T.A.B. March 29, 2023) (sua sponte Director review decision regarding § 325(d) discretion): In response to Petitioner’s rehearing request to the Precedential Opinion Panel, Director Vidal vacated the relevant portion of the institution decision, and remanded for further proceedings. In the underlying panel decision, the Board denied institution, in-part exercising its discretion under § 325(d). In particular, the panel found that (1) the Office considered the substance of Petitioner’s asserted U.S. patent reference because the European counterpart had been cited in an Information Disclosure Statement, and (2) Petitioner had not shown material error by the Office in its consideration of the European counterpart. Prior to institution, Petitioner requested a reply on the § 325(d) issue, but the panel determined Petitioner had not demonstrated good cause. Director Vidal held that the “Board erred by denying Petitioner’s request to file a reply,” and “determine[d] that it was not reasonably foreseeable for Petitioner to anticipate a § 325(d) argument with respect to the asserted [US patent] reference, based on the inclusion of [the EP counterpart] on an IDS considered during prosecution.” She noted, in particular, that “it was not reasonably foreseeable for Petitioner to have anticipated this connection [between the references] since the references themselves do not point to each other.” She vacated the relevant portion of the institution decision, authorized a reply and sur-reply on the § 325(d) issue, and remanded for further proceedings.

AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530, Paper 14 (P.T.A.B. March 2, 2023) (sua sponte Director review decision regarding Fintiv): Director Vidal vacated and remanded the Board panel’s decision denying institution. In the underlying panel decision, the Board exercised its discretion under § 314(a) and Fintiv because a district court had determined the challenged claims were invalid under § 101. Director Vidal vacated and remanded to the Board panel for a compelling merits determination consistent with the June 2022 Fintiv Memo. She instructed that if the Board panel “finds that the record prior to institution presents compelling merits, the Board will institute inter partes review of the challenged claims.” The decision also instructs that, if the Board panel institutes, and the district court’s § 101 determination of invalidity is affirmed in a final, non-appealable judgment by the Federal Circuit, the proceeding shall be terminated.

Boehringer Ingelheim Animal Health USA Inc. v. Kansas State University Research Foundation, PGR2022-00021, Paper 11 (P.T.A.B. Feb. 24, 2023) (sua sponte Director review decision regarding § 325(d) discretion): Director Vidal vacated and remanded the Board panel’s decision denying institution. In the underlying panel decision, the Board exercised its discretion under § 325(d), “finding that the Petitioner’s enablement challenge constituted, under Advanced Bionics, the same or substantially the same arguments previously presented to the Office on written description.” Director Vidal “conclud[ed] that the mere finding of adequate written description by an examiner can never on its own and without more constitute ‘the same or substantially the same arguments’ under Advanced Bionics as a challenge for lack of enablement.” She, thus, vacated the Board panel’s decision, remanding with instructions to “issue a decision providing its rationale (affirmative or negative) regarding whether § 325(d) applies to Ground 2 (enablement) based upon the written description arguments presented during original prosecution.”

Samsung Electronics Co., Ltd. v. Netlist, Inc., IPR2022-00615, Paper 40 (P.T.A.B. Feb. 3, 2023) (sua sponte Director review decision regarding additional discovery and RPI issues): Director Vidal previously initiated Director review (Paper 38) in response to the Patent Owner’s rehearing request to the Precedential Opinion Panel, and she stayed the proceeding. In this decision (Paper 40), she granted-in-part the Patent Owner’s motion for additional discovery related to real party-in-interest issues, in particular, the issue of whether Google is an RPI or privy of Petitioner. She also lifted the stay for the limited purpose of discovery and remanded it to the Board panel to determine whether the Petition is time-barred under 35 U.S.C. § 315(b), based on Google’s possible status as an RPI/privy.

OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 127 (P.T.A.B. Feb. 3, 2023) (Director review decision regarding sanctions): Director Vidal awarded to VLSI, as a sanction against OpenSky, “reasonable fees incurred in this proceeding in raising issues of misconduct by OpenSky before the Board, and the Director review process in its entirety,” and authorized VLSI to file a Motion for Fees. In the same Order, she restored OpenSky as a petitioner to the proceeding, and authorized OpenSky to file an Opposition to VLSI’s Motion.

Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01299, Paper 106 (P.T.A.B. Jan. 18, 2023), and Paper 108 (P.T.A.B. Jan. 27, 2023) (Director review decisions regarding sanctions): On rehearing of prior sanctions decision, Director Vidal authorized additional briefing to PQA, “out of an abundance of caution,” to show cause why sanctions should not be imposed (Paper 106). She stayed the underlying proceeding, instructing the Board not to issue a Final Written Decision until the resolution of the pending rehearing request. In a further order (Paper 108), Director Vidal restored PQA as a party to the proceeding. The order clarifies that “[w]hile it may choose not to show cause, . . . PQA cannot avoid possible sanctions through continued non-participation.” She also lifted the stay of the underlying proceeding.

* There were no new informative or POP decisions during this time period.

This article appeared in the May 2023 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.