by Dennis Crouch
Thousands of patents claims have been cancelled by the PTAB in inter partes evaluation proceedings. These are instances what place a 3rd celebration was inclined to pay hundreds-of-thousands-of-dollars to cancel a set of claims. A superb variety of these patents would have been enforced by a district court docket. In truth, an excellent variety of these patents have been enforced in Federal Court.
Personal Audio, LLC v. CBS Corporation (Supreme Court 2020) once more builds a montage of competing patent tribunals — a district court docket that enforces and an administrative court docket that undermines. This case adds an vital third tribunal to the story — the jury. The disappointing climax is normally the identical — spent on the Federal Circuit who sides with the administration.
In this case, the jury sided with Personal Audio — discovering the asserted claims of its US8112504 each legitimate and infringed. (Verdict excerpt beneath from September 2014). The jury awarded $1.three million.
By the time of the jury verdict, the IPR petition filed by the non-profit EFF had already been instituted by the PTAB. Tthe district court docket allowed post-judgment motions to flounder for months and by April, the PTAB had let go its last judgment discovering the identical claims invalid. (Note, the PTO not institutes IPRs on patents which might be near trial).
The IPR was affirmed on appeal, and the district court docket relied upon that willpower to cancel the jury verdict and enter a last judgment in favor of the Defendant. The Federal Circuit then affirmed based mostly upon its prior precedent of XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018); Dow Chemical Co. v. Nova Chemicals Corp. (Canada), 803 F.3d 620, 628 (Fed. Cir. 2015); ePlus, Inc. v. Lawson Software, Inc., 789 F.3d 1349, 1358 (Fed. Cir. 2015); Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330 (Fed. Cir. 2013).
Now, Personal Audio is up earlier than the U.S. Supreme Court with a couple of fascinating questions. The primary argument is that collateral estoppel (concern preclusion) isn’t an open-and-shut enterprise. Rather, any time a previous judgment of invalidity is invoked, the “patentee-plaintiff must be permitted to demonstrate, if he can, that he did not have a fair opportunity procedurally, substantively and evidentially to pursue his claim the first time.” Blonder-Tongue Laboratories, Inc. v. U. of Illinois Found., 402 U.S. 313, 332–33 (1971). The Restatement of Judgments § 29 additional walks by means of a collection of causes and elements for concern preclusion may not apply to a later case.
Blonder-Tongue was a really large case for defendants supporting non-mutual concern preclusion. The level right here, although is that it set limits and offered a contextual evaluation whereas the Federal Circuit has moved to an if-then rule-based approach post-IPR.
Here, the patentee argues in opposition to estoppel as a result of (1) the PTAB judges had been unconstitionally appointed (by way of Arthrex); and (2) the PTAB willpower overturns a previous jury’s discovering of info in a case protected by the seventh Amendment Right to Trial.
The hassle – as traditional – is that the claims are fairly dangerous: Personal Audio’s patent claims a system for distributing “a series of episodes represented by media files via the Internet.” The new portion seems to be updating a compilation file of at the moment obtainable episodes. The record of recent episodes (and their links) are downloaded by a shopper laptop that may then use the links to request the precise media recordsdata.
The different large issue here’s a query of when does the jury verdict stick. Is it nugatory till the choose enters last judgment?
The Supreme Court will rule on the petition later this Fall.