April 18, 2021

Volume XI, Number 108

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April 16, 2021

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Spotlight on Upcoming Oral Arguments - March 2021

The following telephone arguments will be available to the public live. Access information will be available by 9 AM ET each day of argument at: http://www.cafc.uscourts.gov/public-access-arguments.

Wednesday, March 3, 2021

Apple Inc. v. Qualcomm Incorporated, No. 20-1561

After Qualcomm sued Apple for infringement of U.S. Patent No. 7,844,037 (“the ’037 patent”), Apple petitioned the Board to institute IPR of the ’037 patent, challenging several claims as unpatentable over a prior art reference, Mäkelä, in combination with others. Apple’s petition relied on Mäkelä to disclose “composing . . . a message,” as recited in the challenged claims. Prior to institution, Qualcomm did not dispute that Mäkelä taught this feature. The Board instituted IPR.

After institution, Qualcomm’s Response proposed a construction of “composing . . . a message” and argued that, under that construction, Mäkelä does not disclose this feature. Qualcomm also filed a contingent Motion to Amend its claims to expressly recite the construction it proposed. In its Reply, Apple disputed Qualcomm’s proposed construction. Further, Apple filed an Opposition to the contingent Motion to Amend, pointing for the first time to claims 27 and 28 of Mäkelä to argue that Mäkelä discloses this feature even under Qualcomm’s proposed construction. In its sur-reply, Qualcomm did not address claims 27 and 28 of Mäkelä.

The Board’s Final Written Decision adopted Qualcomm’s proposed construction and found all challenged claims patentable over Mäkelä. The Board declined to consider claims 27 and 28 of Mäkelä, noting these were raised only in Apple’s Opposition to the contingent Motion to Amend, not Apple’s Reply.

On appeal, Apple argues the Board erred by failing to consider claims 27 and 28 of Mäkelä. According to Apple, Qualcomm’s contingent Motion to Amend and Apple’s Opposition were part of the record before the Board, and the Board’s decision to ignore this evidence elevated form over substance and was reversible error. Apple argues that, in failing to consider claims 27 and 28 of Mäkelä, the Board failed to consider important aspects of the problem. Under the Administrative Procedures Act, Apple argues, the Board’s decision was arbitrary and capricious and should be set aside. Apple further argues that, even if the Board had discretion to ignore claims 27 and 28 of Mäkelä, it abused that discretion by failing to provide any rationale for its decision to do so.

Qualcomm responds that the Board properly exercised its discretion in weighing the evidence, including claims 27 and 28 of Mäkelä. According to Qualcomm, the Board correctly found that Apple improperly attempted to incorporate by reference arguments from Apple’s Opposition into Apple’s Reply in violation of 37 C.F.R. § 42.6(a)(3). Qualcomm argues it is undisputed that Apple did not point to claims 27 and 28 of Mäkelä in its Petition or Reply. Qualcomm argues the Board’s Motion to Amend Practice states the Board only considers a contingent Motion to Amend if the Board finds any claim unpatentable, which it did not. Qualcomm further argues that Apple’s arguments at trial regarding claims 27 and 28 of Mäkelä were untimely, and the Board properly exercised its discretion in declining to consider them.

Acceleration Bay LLC v. Take-Two Interactive Software, No. 20-1700

Acceleration alleged that Take-Two infringed U.S. Patent Nos. 6,701,344, 6,714,966, 6,910,069, and 6,920,497 (collectively, the “asserted patents”). The asserted patents disclose techniques for performing networking steps on a particular type of distributed network. Acceleration claimed the infringing acts arose from Take-Two’s manufacture and sale of three popular video games: Grand Theft Auto V, NBA 2K15, and NBA 2K16. According to Acceleration, each of the video game’s software uses the infringing networks and technology to connect large numbers of participants to support their online multiplayer features. Take-Two moved for summary judgment of non-infringement and the United States District Court for the District of Delaware granted the motion.

On appeal, Acceleration argues the district court erred in granting Take-Two’s motion for summary judgment. According to Acceleration, CenTrak, Inc. v. Sonitor Technologies, Inc. held that “a final assembler can be liable for making an infringing combination . . . even if it does not make each individual component.” Because Take-Two’s software and servers are the “final assembler[s]” of the networks and software components accused of infringement, Acceleration argues, Take-Two is a direct infringer. Acceleration distinguishes Centillion Data Systems, LLC v. Qwest Communications International, Inc., in which the customer (rather than the accused infringer) was the “final assembler.” According to Acceleration, Take-Two, not its customers, owns and controls the software processes that make the infringing networks and software components.

Take-Two maintains that they did not infringe because the asserted patents claim a hardware component—the game consoles on which customers play the games—that Take-Two undisputedly does not make, use, or sell. Take-Two argues these game consoles are supplied by the customers, and Acceleration did not assert indirect infringement. Take-Two disputes that it is a “final assembler,” arguing under Centillion that if “the customer, not [the accused infringer], completes the system by providing” a claim element, there is no direct infringement. Because the customers complete the system by providing the game consoles, Take-Two argues, the customers are the “final assembler[s].” Take-Two distinguishes CenTrak, arguing that in CenTrak the accused infringer installed or configured the final claim element, but Take-Two does not install or configure the video game consoles.

Thursday, March 4, 2021

Centripetal Networks, Inc. v. Cisco Systems, Inc., No. 20-1635

Cisco petitioned for IPR of claims 1-21 of U.S. Patent No. 9,124,552 (“the ’552 patent”) and claims 1-20 of U.S. Patent No. 9,160,713 (“the ’713 patent”), both owned by Centripetal. Cisco argued the claims were obvious over the Sourcefire 3D System User Guide (“Sourcefire”), a CD-ROM disc provided with the Sourcefire 3D System product. Centripetal disputed that Sourcefire was publicly accessible, highlighting that the Sourcefire 3D System product it was provided with cost over $25,000. The Board ultimately found Sourcefire qualified as a printed publication, citing its distribution to 586 customers with no obligations of confidentiality.

On appeal, Centripetal maintains that Sourcefire is not a printed publication. Centripetal argues that, under Acceleration Bay, LLC v. Activision Blizzard Inc., public accessibility turns on whether the reference was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it,” and reasonable diligence does not extend to the high cost of the Sourcefire 3D System product. According to Centripetal, the Board’s reliance on Massachusetts Institute of Technology v. AB Fortia and In re Klopfenstein was misplaced, as both involved references distributed for free. Centripetal argues Sourcefire was not distributed for free, and there is no evidence that any skilled artisan did pay or would have paid the $25,000 cost of the Sourcefire 3D System product to obtain Sourcefire. Centripetal further argues the Board erred by placing on Centripetal the burden of persuasion to present evidence as to whether a skilled artisan would, or would not have, found the cost to acquire Sourcefire too high. 

Cisco responds that the Board properly found Sourcefire was publicly accessible. Cisco highlights the Board’s finding that Sourcefire was distributed to 586 customers, including skilled artisans, with no obligations of confidentiality and adds that the evidence showed the price of accessing Sourcefire actually ranged from “$1,385 to £25,000.” Cisco further argues the price to access Sourcefire is a “red herring” in view of the evidence that Sourcefire was distributed to hundreds of companies with no confidentiality obligations, those companies employed persons of ordinary skill in the art, and purchasers were given express permission to share the information within the reference for non-commercial use. Lastly, Cisco notes the absence of any precedent holding the high price of a reference renders it publicly inaccessible.

ARRIS Solutions, Inc. v. Realtime Adaptive Streaming, No. 20-1596

On June 6, 2017, Realtime Data LLC sued Sling TV, L.L.C., Sling Media, L.L.C., DISH Network, L.L.C., and DISH Technologies L.L.C. (collectively, “DISH”) in the United States District Court for the Eastern District of Texas (“Realtime Data suit”) alleging infringement of U.S. Patent No. 8,867,610 (“the ’610 patent”). At that time, however, Realtime Data did not own the ’610 patent because it had previously been assigned to Realtime Adaptive Streaming (“RAS”). Accordingly, Realtime Data voluntarily dismissed the Realtime Data suit without prejudice. On October 10, 2017, RAS filed a complaint again naming DISH and alleging infringement of the ’610 patent (“RAS suit”). On July 3, 2018, DISH petitioned for IPR of the ’610 patent.

Prior to institution, RAS argued DISH’s petition was time-barred under 35 U.S.C. § 315(b) because it was filed more than one year after DISH was served with a complaint in the Realtime Data suit. The Board instituted IPR. The Board rejected RAS’s argument, noting Realtime Data did not own the ’610 patent when it filed the Realtime Data suit. It construed § 315(b) based on the statute’s heading—“Patent Owner’s Action”—to require that the party serving the complaint be the owner of the patent. Following institution, ARRIS was joined as a petitioner in the IPR. ARRIS had been sued by Realtime Data on November 6, 2017.

Prior to trial in the IPR, the Precedential Opinion Panel designated as precedential the Board’s decision in GoPro, Inc. v. 360Heros, Inc. GoPro held that “[t]he service of a pleading asserting a claim alleging infringement, including where the serving party lacks standing to sue or the pleading is otherwise deficient, triggers the one-year time period for a petitioner to file a petition under 35 U.S.C. § 315(b).” In light of GoPro, RAS filed a motion to dismiss the IPR as time barred under § 315(b). Trial occurred, but prior to issuing a Final Written Decision the Board granted RAS’s motion and terminated the IPR.

DISH and ARRIS appealed. Then, the Supreme Court issued Thryv, Inc. v. Click-To-Call Technologies, LP, which held that decisions made at institution regarding the § 315(b) time-bar provision are “final and nonappealable.”

On appeal, ARRIS and DISH (collectively, “the Appellants”) argue the Board exceeded its statutory authority in terminating the IPR. First, the Appellants argue ARRIS should not have been terminated from the IPR because the joinder statute explicitly states § 315(b) shall not apply to joined parties. Second, the Appellants argue none of the Appellants should have been terminated from the IPR because the Board’s decision at institution that the Appellants were not time-barred under § 315(b) was “final” under Thryv and should not have been revisited. Third, the Appellants argue that, because the Board’s termination decision relied on Click-to-Call Technologies, LP v. Ingenio, Inc., YellowPages.com, LLC, which was vacated by Thryv, at a minimum the Administrative Procedure Act requires that this case be remanded for the Board to apply the proper law. Fourth, the Appellants argue that GoPro was ad hoc rulemaking without notice and comment, and the Board’s retroactive application of GoPro was arbitrary and capricious. Lastly, Arris maintains that this Court has jurisdiction over this appeal because a Final Written Decision is not necessary for jurisdiction so long as there is a final adverse judgment, which the termination decision was.

In response, RAS argues the Court does not have jurisdiction to hear this appeal because the Board’s decision to terminate was merely a reconsideration of its institution decision and, as such, is “final and nonappealable” under § 314(d) and Thryv. RAS further argues that the Board’s termination of joined petitioner ARRIS does not confer jurisdiction where none exists because the joinder similarly relates to institution and, as such, is final and non-appealable. Next, RAS argues that, even if jurisdiction exists, the Appellant’s arguments are meritless. Regarding GoPro, RAS argues the Board did not retroactively apply GoPro but merely found its “reasoning persuasive, regardless of whether GoPro is binding in this case.” Regarding Click-to-Call, RAS argues GoPro found Click-to-Call’s statutory analysis persuasive, and Thryv vacated Click-to-Call for a lack of jurisdiction, not a flaw in that statutory analysis.

The Director of the United States Patent and Trademark Office (“the PTO”) intervenes to contest the Court’s jurisdiction as well. The PTO argues Thryv held the Board’s time-bar determinations under § 315(b) are part of the agency’s institution decision subject to the no-appeal provision in § 314(d). Further, the PTO argues appeals to this Court are limited to those in which the Board has issued a Final Written Decision, and no Final Written Decision was issued here.

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© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 57
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About this Author

Law Clerk

Alexander (Zan) Newkirk’s practice encompasses patent litigation, prosecution, and client counseling in the chemical, pharmaceutical, and medical device areas. He has industry experience with pulmonary and nasal medical devices, drug formulation, and vaccine formulation development.

Zan’s litigation experience covers various aspects of trial preparation, including discovery and regular pre-trial activities. He has worked on ANDA (Abbreviated New Drug Application) litigation.

Prior to law school, Zan interned at Novavax, a vaccine development company, where he analyzed...

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Elizabeth Ferrill Patent Attorney Finnegan Law Firm
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Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

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