Here’s the latest.

Full Fed. Circ. Won’t Review Motion Sensor Patent Fight

Reported By Adam Lidgett on Law360

On Tuesday, the Federal Circuit rejected KEYnetik Inc.’s petition for both a panel and en banc rehearing of a split-panel decision that affirmed a PTAB ruling, finding several claims of a patent for a motion sensor system invalid as obvious. The patent at issue allows mobile users to answer incoming calls through a series of movements. KEYnetik sued Samsung claiming their Galaxy smartphones and other products infringed on its patented mobile technology. Samsung petitioned for inter partes review, which the PTAB granted after concluding that there was a reasonable likelihood that Samsung could show that at least one claim was invalid as obvious.

According to Lidgett, KEYnetik argued in its petition for rehearing that the panel majority diverged from precedent by offering its own arguments and evidence that were not raised by either party, thereby “flout[ing] its due process rights.” Despite this argument, the Federal Circuit did not disturb January’s decision. The court provided no explanation behind its decision.

While the panel majority in January backed the PTAB’s ruling to strike down several patent claims, it also tossed the board’s ruling with regard to other claims in the patent.

The panel majority had said that the PTAB erred in finding that Samsung did not have a burden to show that an ordinarily skilled person would have a “reasonable expectation of success” in combining an earlier patent publication known as Linjama and a patent known as Tosaki. The majority then vacated the PTAB’s ruling on four disputed claims and remanded the case back to the board to take another look at whether there was such an expectation of success.

Good News/Bad News: Patent Owners and Petitioners Both Make Gains in CAFC Uniloc Decision

Reported By William A. Meunier and Sean M. Casey on The National Law Review

The Federal Circuit’s recent decision in Uniloc 2017 LLC v. Facebook Inc. raised numerous estoppel issues under 35 U.S.C. § 315(e)(1). And according to Meunier and Casey, the court’s decision also provided a “mixed bag” of good and bad news for patent owners and inter partes review petitioners.

On the plus side for patent owners (but not for petitioners), the Federal Circuit determined that the so-called “No Appeal” provision does not necessarily apply to 35 U.S.C. § 315(e)(1), and, therefore, a patent owner may still appeal a Patent Trial and Appeal Board determination that a petitioner is not estopped from maintaining an IPR under § 315(e)(1).  However, the Federal Circuit also provided petitioners with good news, ruling that one petitioner’s joining of another petitioner’s instituted IPR does not place the two petitioners in privity for § 315(e)(1) estoppel purposes.

The case involved an overlap of parties and challenges to Uniloc’s patent, creating estoppel issues under 35 U.S.C. § 315(e)(1), which is intended to prevent a party from prevailing in one stage of a case by asserting one position and then relying on a contrary position later in the case. Here, PTAB determined Facebook was estopped from maintaining the Facebook IPRs against any of the claims at issue in the Apple IPR, but concludes that LG was not similarly estopped, even though LG joined the Facebook IPRs. On appeal, Uniloc argued that LG was in privity with Facebook and therefore should have been estopped from maintaining the Facebook IPRs. As Meunier and Casey highlight, the Federal Circuit rejected Uniloc’s argument, concluding that LG’s joinder in the Facebook IPRs did not evidence the necessary control over Facebook in the later Apple IPRs. Meunier and Casey contend that the decision provides guidance for patent owners and petitioners.

For example, Petitioners need to be careful about joining ongoing IPRs, lest their involvement give rise to estoppel in their own separate IPRs.  Patent owners, on the other hand, now may appeal at least certain § 315(e)(1) decisions, but they will need evidence other than mere joinder to establish the control needed to prove privity.