Fed. Cir. affirms PTAB decision on IPR Joinder Estoppel

Fed. Cir. affirms PTAB decision on IPR Joinder Estoppel

The Court concluded that it could review the patent owner's challenge to the Board's decision that the petitioner was not estopped from maintaining a patentability challenge under a nearly identical statutory estoppel provision

The US Court of Appeals for the Federal Circuit observed that the "no appeal" provision of 35 U.S.C. § 314 would not stop the Court from reviewing the Patent Trial and Appeal Board (PTAB) findings. The PTAB in the Uniloc vs. Facebook, Inc., WhatsApp Inc. held that the petitioner is not stopped from maintaining an IPR proceeding under the IPR estoppels provision of 35 U.S.C. § 315(e)(1).

PTAB found that the patent owned by Uniloc (U.S. Patent No. 8,995,433) was unpatentable. The patent was challenged by several different parties including Facebook, Apple, and LG Electronics in 2017. Facebook and LG were joined to Apple's IPR. PTAB upheld as patentable all the challenged claims of Uniloc's patent. PTAB also instituted Facebook's separate petition, which was dismissed in part from the proceeding because, as a joined party to the Apple IPR, Facebook was estopped under § 315(e)(1) as to the claims challenged in the Apple IPR (claims 1–6 and 8 of the '433 patent).

PTAB said that Facebook is not estopped from maintaining the IPR "because § 315(e)(1)'s estoppel provisions apply only to grounds that the petitioner raised or reasonably could have raised with respect to that claim." Hence, PTAB allowed Facebook to proceed to limit Facebook's participation to claim 7. In the Final Written Decision, the PTAB held all the challenged claims unpatentable as obvious.

To this Uniloc argues that the proceeding should have been terminated as Facebook was deemed estopped. It also argues that the proper notice was denied to Uniloc which violated due process. Uniloc sought rehearing which was denied by PTAB and hence it appealed to Federal Circuit.

While on appeal, Uniloc centered itself on two main arguments. First, the Board erred in finding that LG is not estopped and secondly, the Board erred in finding that Facebook is not estopped from challenging Claim 7.

The Court considered the question concerning the reviewability to be: Whether 35 U.S.C. § 314(d) statutorily precludes judicial review, following a final written decision in an inter partes review proceeding, of a challenge to the Board's conclusion that under § 315(e)(1) a petitioner is not estopped from maintaining the proceeding before it.

The Court held that "Considering the strong presumption of reviewability of agency action, we see no indication that § 314(d) precludes judicial review of the Board's application of § 315(e)(1)'s estoppel provision in this case, in which the alleged estoppel-triggering event occurred after institution. Such a holding is a natural consequence of our reasoning in Credit Acceptance. We concluded there that we could review the patent owner's challenge to the Board's decision that the petitioner was not estopped from maintaining a patentability challenge under a nearly identical statutory estoppel provision, albeit as applied to the CBM scheme."

The Federal Circuit affirmed the PTAB decision not to estop Facebook to participate in Apple's IPR. It states, "because Claim 7 was not at issue in the Apple IPR, the plain language of the statute supports the conclusion that Facebook is not estopped from challenging this claim in this proceeding, regardless of its dependency on Claim 1"