Patent Case Summaries April 10, 2019

Patent Case Summaries | Week Ending April 5, 2019

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.


Huawei Device Co. v. Optis Cellular Technology, LLC, No. IPR2018-00816 (PTAB Jan. 8, 2019) (designated precedential on Apr. 5, 2019). Opinion by Zecher, joined by Deshpande and Pinkerton.

Following the Patent Trial and Appeal Board’s decision denying institution of an IPR, the Petitioner filed a request for rehearing accompanied by three exhibits not previously admitted into the record. The Board explained the applicable procedure and standard for submitting new evidence on rehearing, found that the Petitioner had not met that standard, and found that the Petitioner had not otherwise shown any abuse of discretion in the Board’s decision denying institution.

The Board noted that the rule governing a rehearing request, 37 C.F.R. § 42.71(d), does not explicitly address whether new evidence may be filed with the request. The Office Patent Trial Practice Guide, however, states that “[e]vidence not already of record at the time of the decision will not be admitted absent a showing of good cause.” The Board explained that, “Ideally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue ‘good cause’ exists for admitting the new evidence. Alternatively, a party may argue ‘good cause’ in the rehearing request itself.” In this case, the Petitioner neither requested a conference call nor explained in the rehearing request why the exhibits should be admitted. Absent a showing of “good cause,” exhibits should not be admitted and “are not entitled to consideration” on rehearing. The Board therefore exercised its authority to expunge the new exhibits.

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Chevron Oronite Co. LLC v. Infineum USA L.P., No. IPR2018-00923 (PTAB Nov. 7, 2018) (designated informative on Apr. 5, 2019). Opinion by Tornquist, joined by Ankenbrand and Heaney.

Addressing an IPR petition challenging twenty patent claims, the Patent Trial and Appeal Board found that the Petitioner had demonstrated a reasonable likelihood of prevailing with respect to only two dependent claims. The Board exercised its discretion to deny institution as to all twenty claims because institution is discretionary and, in this case, “instituting a trial with respect to all twenty claims based on evidence and arguments directed to [two dependent claims] is not an efficient use of the Board’s time and resources.”

Citing the Supreme Court’s SAS opinion, the Board explained that “[e]ven when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, … institution of review remains discretionary.” The Board also relied on post-SAS USPTO guidance explaining that the Board may consider the number of claims and grounds that meet the “reasonable likelihood” standard when deciding whether to institute IPR under 35 U.S.C. § 314(a). The Board then denied institution, finding that the Petitioner had “demonstrate[d], at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.”

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Deeper, UAB v. Vexilar, Inc., No. IPR2018-01310 (PTAB Jan. 24, 2019) (designated informative on Apr. 5, 2019). Opinion by Kenny, joined by Arbes and Benoit.

The Patent Trial and Appeal Board exercised its discretion to deny institution of an IPR where the “Petitioner ha[d] demonstrated a reasonable likelihood of prevailing with respect to only two of twenty-three challenged claims as to only one of four grounds of unpatentability,” explaining that institution “would not be an efficient use of the Board’s time and resources.”

As in the PTAB’s Chevron opinion designated informative on the same day, the Board in this opinion explained that “[e]ven when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims, … institution of review remains discretionary.” The Board likewise relied on post-SAS USPTO guidance explaining that the Board may consider the number of claims and grounds that meet the “reasonable likelihood” standard when deciding whether to institute IPR. The Board additionally noted that, in exercising its discretion, the Board is “guided by the statutory requirement … to consider the effect of any regulations on ‘the efficient administration of the Office [and] the ability of the office to timely complete proceedings,’ 35 U.S.C. § 316(b), as well as the requirement to construe [the Board’s] rules to ‘secure the just, speedy, and inexpensive resolution of every proceeding,’ 37 C.F.R. § 42.1(b).” Under this framework and “based on the particular facts of this proceeding,” the Board denied institution.

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