Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Acceleration Bay, LLC v. Activision Blizzard Inc., Appeal Nos. 2017-2084, -2085, -2095, -2096, -2097, -2098, -2099, -2117, 2118 (Fed. Cir. Nov. 6, 2018)
In appeals of six inter partes review final decisions on three challenged patents, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”) decision that certain claims of U.S. Patent No. 6,829,634, U.S. Patent No. 6,701,344, and U.S. Patent No. 6,714,966 (the “Patents”) were patentable, while other claims were unpatentable. The Patents relate to “a broadcast technique in which a broadcast channel overlays a point-to-point communications network.”
Patent Owner made three arguments challenging the PTAB’s decision. First, it took issue with the PTAB construing the term “participant” according to its plain meaning. The Court rejected the Patent Owner’s position because the specification or claims did not define the term in the manner sought by the Patent Owner.
Also This Week
Arista Networks, Inc. v. Cisco Systems, Inc., Appeal Nos. 2017-1525, -1577 (Fed. Cir. Nov. 9, 2018)
On cross-appeals from an inter partes review upholding some claims and invalidating others in U.S. Patent No. 7,340,597 (“the ’597 patent”), the Federal Circuit reversed and remanded as to Petitioner Arista’s appeal, and affirmed as to Patent Owner Cisco’s cross-appeal. The ’597 patent is generally directed to uses of a logging module in network security applications.
As to Petitioner’s appeal, the Court found that the Patent Trial and Appeal Board (“PTAB”) erred in its construction of the term “broadcast,” which improperly excluded the only disclosed embodiment of “broadcasting” disclosed in the patent. The Court went on to reject both parties’ proposed alternative constructions, construe the disputed term itself, and remand for further proceedings.
In Patent Owner Cisco’s cross-appeal, Cisco argued that the PTAB erred in declining to apply the doctrine of assignor estoppel to bar Arista’s petition. (The named inventor of the ’597 patent had been employed by Cisco at the time of the invention, but had left shortly thereafter to found Arista with a number of other Cisco employees. The doctrine of assignor estoppel often operates to bar such assignors from contesting validity in district court.) The Court first determined that the PTAB’s decision on assignor estoppel is subject to judicial review under Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131 (2016), but went on to hold that the doctrine of assignor is not applicable in IPR proceedings. Specifically, the Court found that 35 U.S.C. § 311(a), in providing that “a person who is not the owner of a patent may file” an IPR petition, “unambiguously dictates that assignor estoppel has no place in IPR proceedings.” As such, the PTAB’s decision was affirmed as to Cisco’s cross-appeal.
The opinion can be found here.
Written by: Scott D. Eads and Nika Aldrich, Schwabe, Williamson & Wyatt
Contributors: Cristin Wagner and Jason A. Wrubleski