by Dennis Crouch
Network-1 Techs. v. Hewlett-Packard Co. (Fed. Cir. 2020)
In this case, the E.D. Tex. jury got here again with a win for the defendant — discovering that HP did not infringe Network-1’s US6218930 and that the patent was invalid. Post-Verdict, the district court docket flipped on validity — holding that HP was estopped from elevating its obviousness problem as a result of it had joined an (unsuccessful) IPR in opposition to the patent.
The invention right here pertains to logic for sending a power-supply on the identical twisted-pair used for knowledge transmission (Power over Ethernet or PoE). The primary approach is that the ethernet cable will start-off with a low-level present. If a selected access-device indicators that it may possibly deal with increased energy, then the server will increase the ability degree being despatched. The patent right here issued in 2001 (1999) precedence and the lawsuit was initially filed in 2011.
Statutory Estoppel: The large concern within the case for the patent world is statutory estoppel. One cause why this lawsuit took so lengthy to finish was that there have been two intervening reexaminations and one inter-partes-review. HP was time-barred from bringing its own IPR, however was capable of be a part of one filed by Avaya. The instituted IPR challenged the patent claims for anticipation and obviousness primarily based upon two prior artwork references Matsuno and De Nicolo. Although the PTAB granted the IPR, it will definitely upheld the validity of the challenged claims.
One results of shedding an IPR problem is estoppel under 35 U.S.C. § 315(e)(2).
(2) Civil actions and different proceedings. The petitioner in an IPR … that leads to a last written determination … could not assert … that the declare is invalid on any floor that the petitioner raised or fairly might have raised throughout that inter partes evaluation.
Id. Following the IPR last written determination, the district court docket finally decided that HP was usually estopped from elevating an obviousness problem (this ruling sadly got here post-verdict after the obviousness problem had already been raised).
On appeal, the Federal Circuit vacated — discovering that the district court docket too broadly utilized estoppel. In studying the statute, the appellate panel concluded that “a party is only estopped from challenging claims in the final written decision based on grounds that it ‘raised or reasonably could have raised’ during the IPR.” Slip Op. In this case, HP was time-barred from brining new claims and was restricted to easily becoming a member of the claims introduced by Avaya. “Because a joining party cannot bring with it grounds other than those already instituted, that party is not statutorily estopped from raising other invalidity grounds.” Id.
What is a “Ground.” The USPTO has a means that it treats a “ground” in inter partes evaluation, however how ought to the time period actually be construed? The estoppel provision applies to “any ground” raised within the IPR, however the statute doesn’t go on to outline the that means of the time period “ground.” Here, the court docket interpreted the time period as any invalidity competition in opposition to the challenged claims within the IPR primarily based upon the prior artwork that served as the idea for the IPR. The court docket writes:
When the Board reached a last written determination …, HP was statutorily estopped from elevating invalidity grounds primarily based on Matsuno and De Nicolo in opposition to claims 6 and 9 in a district court docket motion. HP, nonetheless, was not estopped from elevating different invalidity challenges in opposition to these claims as a result of, as a becoming a member of get together, HP couldn’t have raised with its joinder any further invalidity challenges.
Slip Op. Remember, the jury discovered the patent invalid and that verdict was rejected by the court docket on JMOL (JNOV). That JMOL determination has been vacated. On remand, the district court docket will now have to choose whether or not to (1) give impact to the decision; or (2) maintain a brand new trial on validity.
The Federal Circuit bought this proper in accordance with the Statute — and it additionally serves as a sign to of us who’re deciding whether or not to affix a pending IPR that the estoppel penalties will probably be fairly restricted.
Claim Construction: On appeal, the Federal Circuit gives the patentee with potential shot at profitable by shifting the declare declare building. In explicit, the court docket discovered error in building of the time period “main power source.” In explicit, the district court docket construed the phrase as requiring a “DC power source” and on appeal the Federal Circuit expanded the definition:
We conclude that the proper building of “main power source” contains each AC and DC energy sources. There is not any dispute that the extraordinary that means of “power source” contains each AC and DC energy sources. And neither the claims nor the specification of the ’930 patent require a departure from this extraordinary that means.
Slip Op. On remand, we’ll see if a brand new jury adjustments its thoughts primarily based upon this distinction.
Claim Broadening: The third query on appeal intertwined HP’s argument that the patentee had improperly broadened declare 6 throughout a reexamination in a means prohibited by statute:
No proposed amended or new declare enlarging the scope of a declare of the patent will probably be permitted in a reexamination continuing
35 U.S.C. § 305. A declare is “enlarg[ed]” if it covers any embodiments not coated by any authentic declare.
- Two prior district courts interpreted Claim 6’s “secondary power source” to be bodily separate from the claimed “main power source.”
- In the reexamination, two dependent claims had been added to to require that the 2 energy sources be “the same physical device.”
Although declare 6 was not itself amended, the dependent declare strongly urged that the declare ought to be interpreted in another way. As the lawsuit progressed, Network-1 subsequently disclaimed these newly added claims and the district court docket gave Claim 6 its slender interpretation.
On appeal, the Federal Circuit regarded on the last consequence — the scope of Claim 6 has not modified. “Where the scope of claim 6 has not changed, there has not been improper claim broadening, and HP’s argument fails.”
The court docket went on to clarify that the addition of these dependent claims wouldn’t have modified the scope of declare 6.
Thus, even had been dependent claims 15 and 16 broader than unamended, impartial declare 6, the treatment wouldn’t be to search out declare 6 invalid as broadened, however to invalidate added claims 15 and 16 [for improper broadening].
Slip Op. This determination sits well right here, however will result in additional odd outcomes when utilized to extraordinary prosecution as a result of it permits for dependent claims which can be broader than the impartial model.