Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Apple Inc. v. Voip-Pal.com, Inc., Appeal No. 2018-1456, -1457 (Fed. Cir. Sept. 25, 2020)
In our Case of the Week, the Federal Circuit addressed two novel issues following inter partes review proceedings concerning two patents that were asserted against Apple and other large technology companies including Twitter.
The patents in suit concern voice over IP technology. After being sued, Apple filed two petitions for inter partes review of the two patents, asserting the patents were obvious. During the IPR proceedings, the former CEO of Voip-Pal sent six letters to various parties, copying members of Congress, the President, federal judges, and administrative patent judges on the Board (not copying Apple), complaining about and criticizing the IPR system, and requesting that the Board dismiss Apple’s petition or render judgment in favor of Voip-Pal. The Board thereafter issued its final written decision holding that Apple had failed to prove that the patents were invalid as obvious.
Network-1 Technologies, Inc. v. Hewlett-Packard Company, Appeal Nos. 2018-2338, -2339, -2395, -2396 (Fed. Cir. Sept. 24, 2020)
In this case, the Federal Circuit vacated the district court’s post-trial determination that defendant Hewlett-Packard Co. was estopped under 35 U.S.C. § 315(e) from raising invalidity grounds not raised in an inter partes review proceeding that HP had joined as a party, and affirmed the district court’s summary judgment determination that an asserted claim had not been impermissibly broadened during re-examination proceedings, which would have rendered it invalid under 35 U.S.C. § 305. Because the Court also found the jury’s verdict of non-infringement to be based on an erroneous claim construction, the case was remanded for new proceedings on infringement and invalidity.
On § 315(e) estoppel, the Court held that under its own precedent, a joined party to an already-instituted IPR was not permitted to assert new grounds for unpatentability that were not already instituted. Where HP was time-barred from bringing its own IPR petition and joined an already-instituted IPR, it therefore could not have reasonably raised grounds not instituted in that IPR and was not estopped from asserting them at trial. On the § 305 claim-broadening question, an asserted independent claim required a “main” and “secondary” power source, which multiple district courts had construed to refer to physically separate devices. On re-examination, patentee Network-1 had added independent claims, not asserted at trial and also statutorily disclaimed, wherein the main and secondary power sources were the same device. The Federal Circuit found that the asserted independent claim had not been amended and so clearly had the same scope after re-examination, and if the new independent claims resulted in a broader claim scope, then it would have been those unasserted claims and not the independent claim that was invalid.