Impact of Concluded PTAB Proceedings on Litigation
Patent challenge proceedings of the USPTO's Patent Trial & Appeal Board (PTAB) are designed to provide a low cost, expedited option to district court litigation. Of course, if a patent challenger is unsuccessful at the PTAB, the district court is left to make the ultimate resolution on validity. Now several years into the PTAB's existence, closed AIA trial records are being leveraged by the courts to resolve disputed issues of fact.
Especially as to matters of claim scope, the PTAB's expansion of the intrinsic record is providing courts with a short cut in assessing otherwise thorny factual determinations. Accused infringers are beginning to favorably leverage this record in related litigation—such as in a motion for summary judgment.
As a reminder, summary judgment is only permissible if there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. As such, raising highly fact intensive proceedings at the PTAB can be a roadblock in summary judgment as PTAB proceedings often present competing facts. Yet, in two recent instances Defendants successfully moved for summary judgment based on PTAB findings in the intrinsic record.
In this case, Ford filed a motion for summary judgment of noninfringement that was stayed pending the outcome of Ford’s IPR against the asserted patent. The claims were ultimately found patentable by the PTAB, and the Final Written Decision included explicit findings on claim construction relevant to patentability, namely, that the prosecution history expressly disclaimed pressure regulators. Because pressure regulators are a component of Ford’s accused product, Ford argued that it was entitled to summary judgment of noninfringement at the district court.
In the decision, the district court noted that courts generally give deference to PTAB decisions based on the PTAB’s specialized patent knowledge and expertise, citing Pride Mobility Prods. Corp. v. Permobil, Inc., No. 13-01999, 2013 WL 8445809, at *3 (E.D.Pa. Aug. 14, 2013); Old Reliable Wholesale, Inc. v. Cornell Corp., 635 F.3d 539, 548 (Fed. Cir. 2011) (“[T]he PTO has acknowledged expertise in evaluating prior art and assessing patent validity.”); 35 U.S.C. § 6(a) (acknowledging the “legal knowledge and scientific ability” of the PTAB patent judges).
The district court amended its previous claim construction in view of the PTAB’s findings regarding pressure regulators and granted the motion. In other words, even though Ford lost at the PTAB, it was able to leverage the PTAB’s findings into a win at the district court. Absent this additional intrinsic evidence it seems likely that the question of disclaimer would have been considered a dispute
In this case, Medshape filed an IPR challenging claims 6-11, 13, and 16-18 of Cayenne’s patent. The PTAB instituted trial only on claims 16-18, stating it did not consider the merits of Medshape’s arguments for claims 6-11 and 13 because these claims were indefinite based on the phrase “substantially different construction.” Soon after, Medshape filed a motion for summary judgment of invalidity of these claims due to indefiniteness at the district court.
In the decision, the district court held that although the PTAB’s findings on indefiniteness were not binding, they were “compelling evidence” and Medshape’s motion for summary judgement was granted. (Although the court erroneously relied on a case saying cases from the TTAB—rather than PTAB—should be given weight, giving deference to PTAB decisions has also been recognized by the courts, as noted in the cites above.) Again, although the PTAB proceedings themselves were not successful with regard to canceling these claims, the additions to the intrinsic record were useful in invalidating the claims at the district court.
Losses at the PTAB may still be of significant value. As illustrated above, statements in the expanded intrinsic record can be successfully used in concurrent litigation, even at the summary judgment stage.