Fresh From the Bench: Latest Federal Circuit Court Cases
The Supreme Court and the Federal Circuit issued three precedential opinions this week concerning matters of first impression involving inter partes reviews, two of which concern the status of government actors in the process. We cover those below.
In our Case of the Week we address the third matter of first impression—a matter concerning the time bar restrictions for filing an IPR under 35 U.S.C. 315(b).
CASE OF THE WEEK
Power Integrations, Inc. v. Semiconductor Components Industries, LLC, Appeal No. 2018-1607 (Fed. Cir. June 13, 2019)
Power Integrations sued Fairchild Semiconductor Corporation for patent infringement in 2009. In 2014, a jury awarded Power Integrations $105 million in damages. Following appeal, the case was retried. In the second trial, the jury awarded $139.8 million.
In November 2015, Fairchild entered into an agreement to merge with Semiconductor Components Indus. (“ON Semiconductor”). The merger did not close immediately. While the merger was still pending, in March 2016, ON Semiconductor filed a petition for IPR challenging claims from one of the patents that had been asserted in the trial. The merger between Fairchild and ON Semiconductor closed six months later, in September 2016. Four days later, the Board instituted IPR.
ALSO THIS WEEK
Regents of the University of Minnesota v. LSI Corp., Appeal Nos. 2018-1559, -1560, 1561, 1562, 1563, 1564, 1565 (Fed. Cir. June 14, 2019)
In this appeal from the Patent Trial and Appeal Board (“PTAB”), the Federal Circuit affirmed several decisions declining to dismiss petitions for inter partes review (“IPR”) filed against patents owned by the University of Minnesota (“UMN”), a state university. After the petitions were filed, but before the PTAB decided whether to institute them, UMN filed motions to dismiss each petition, arguing that sovereign immunity bars IPRs for state-owned patents because they are entirely a dispute between a private party and the state. The Court, applying the reasoning from St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., held that just as tribal sovereign immunity does not apply to IPRs, state sovereign immunity also does not apply. This is because during an IPR, the PTAB acts as the United States in its role as a superior sovereign to reconsider a prior administrative grant of a patent. That Congress enlisted the assistance of private parties to file petitions for IPR does not change their essential character – IPRs are agency proceedings.
The opinion can be found here.
Samsung Electronics Co., Ltd. v. Elm 3DS Innovations, LLC, Appeal Nos. 2017-2474 et al (Fed. Cir. June 12, 2019)
In this consolidated appeal of IPR proceedings involving 11 related patents and 105 patent claims, the Federal Circuit affirmed the Patent Trial & Appeal Board’s (PTAB) obviousness ruling in favor of the patent owner. The IPRs involved members of a family generally directed to stacked integrated circuit memory. The Federal Circuit first reviewed the PTAB’s construction of “substantially flexible” terms appearing in all but two of the asserted claims, applying the now-superseded BRI standard on a de novo review. After considering evidence concerning the plain and ordinary meaning of the “substantially flexible” terms in view of the patent specification, and a prosecution history disclaimer, the Federal Circuit adopted a construction slightly differing from the PTAB’s construction. Notwithstanding this adjustment, the Federal Circuit upheld the PTAB’s ruling that Petitioner had failed to carry its burden of proving obviousness of the challenged claims. The Court agreed that Samsung’s petition had glossed over complexities in making the asserted prior art combinations and had also failed to provide evidence sufficient to show a reasonable expectation of success.
The opinion can be found here.
Return Mail, Inc. v. United States Postal Service, No. 17-1594 (Sup. Ct. June 10, 2019)
The Supreme Court of the United States held that the U.S. government is not a “person” capable of petitioning for an inter partes review, post-grant review, or covered business method (“CBM”) review under the Leahy-Smith America Invents Act (“AIA”). At issue was a patent for a mail processing method issued to appellant Return Mail, Inc., which had been asserted against the U.S. Postal Service (“USPS”), and which the Patent Trial and Appeal Board had found to be patent-ineligible in a CBM review petitioned by USPS. The Federal Circuit affirmed and the Supreme Court reversed, applying a “longstanding interpretive presumption that ‘person’ does not include the sovereign” in the absence of Congressional intent to the contrary, which the Court did not find. Justices Breyer, Ginsburg, and Kagan dissented, pointing to indicia of Congressional intent to include the government among “persons” who may institute AIA proceedings.
The opinion can be found here.
Written by: Scott Eads and Nika Aldrich, Schwabe, Williamson & Wyatt
Contributors: Jason Wrubleski , Erin Forbes