“Exemplary Embodiments” as Boiler Plate
Answering the Call — Pro Se Assistance at the USPTO
Prof Patterson: Teasing Through a Single FRAND Rate
Broad Estoppel After Failed IPR: What Prior Art “could have been found by a skilled searcher’s diligent search?”
by Dennis Crouch
Douglas Dynamics v. Meyer Prods (W.D. Wisc 2017) [2017-04-18 (68) Order re post IPR invalidity defenses].
After Douglas sued Meyer for infringing its U.S. Patent No. 6,928,757 (Snowplow mounting assembly), Meyer petition for inter partes review -- alleging that several of the claims were invalid. Although the "director" iniated the review, the PTAB eventually sided with the patentee - reaffirming the validity of the claims.
Back at the district court, Douglass asked the court to apply the estoppel provisions that of Section 315(e)(e):
The petitioner in an inter partes review ... that results in a final written decision under section 318(a) . . . may not assert . . . in a civil action arising [under the patent laws] . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
35 U.S.C. § 315(e)(2). The question for the district court here, was the scope of estoppel - what constitutes grounds that were "raised or reasonably could have [been] raised" during the IPR. Here, the court took a position for fairly strong estoppel:
If the defendant pursues the IPR option, it cannot expect to hold a second-string invalidity case in reserve in case the IPR does not go defendant’s way. In many patent cases, particularly those involving well-developed arts, there is an abundance of prior art with which to make out an arguable invalidity case, so it would be easy to have a secondary set of invalidity contentions ready to go. The court will interpret the estoppel provision in § 315(e)(2) to preclude this defense strategy. Accordingly, the court will construe the statutory language “any ground that the petitioner . . . reasonably could have raised during that inter partes review” to include non-petitioned grounds that the defendant chose not to present in its petition to PTAB.
In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir.), the Federal Circuit wrote in dicta that no estoppel should apply to grounds that were petitioned, but not instituted. The Wisconsin court here suggested some potential problems with that outcome, but decided to follow the CAFC's lead, writing:
So until Shaw is limited or reconsidered, this court will not apply § 315(e)(2) estoppel to [petitioned but] non-instituted grounds, but it will apply § 315(e)(2) estoppel to grounds not asserted in the IPR petition, so long as they are based on prior art that could have been found by a skilled searcher's diligent search.
What this means for the defendant here is that the only 102/103 arguments that it gets to raise are ones already deemed total failures by the PTAB - and thus are unlikely winners before a district court.
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Of some importance, the PTAB's final written decision was released in November 2016. For estoppel purposes, that final decision is all that is required for estoppel to kick-in. However, the case currently on appeal to the Federal Circuit -- already giving the defendant its second bite at the apple.
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Supreme Court: Challenging Quick-Look Eligibility Denials
Find Your Patent Pro Bono Program
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Licensee Marking Requirement
PTO Director Lee
Issue Preclusion: Claim Construction in Prior Lawsuit
Play at Invention
Objective Indicia of Non-Obviousness Must be Tied to Inventive Step
Intellectual Ventures Stops Buying Patents
Generics Successful at Invalidating Novartis Gilenya Patent
Patentlyo Bits and Bytes by Anthony McCain
Trade Secret Protections at the Patent Office
Unwired Planet v. Huawei: An English Perspective on FRAND Royalties
Guest Post by Professor Jorge L. Contreras
In the latest decision by the UK High Court of Justice (Patents) in Unwired Planet v. Huawei ([2017] EWHC 711 (Pat), 5 Apr. 2017], Mister Justice Colin Birss has issued a detailed and illuminating opinion regarding the assessment of royalties on standards-essential patents (SEPs) that are subject to FRAND (fair, reasonable and non-discriminatory) licensing commitments. Among the important and potentially controversial rulings in the case are:
- Single Royalty: there is but a single FRAND royalty rate applicable to any given set of SEPs and circumstances,
- Significance of Overstep: neither a breach of contract nor a competition claim for abuse of dominance will succeed unless a SEP holder’s offer is significantly above the true FRAND rate,
- Global License: FRAND licenses for global market players are necessarily global licenses and should not be limited to a single jurisdiction, and
- Soft-Edge: the “non-discrimination” (ND) prong of the FRAND commitment does not imply a “hard-edged” test in which a licensee may challenge the FRAND license that it has been granted on the basis that another similarly situated licensee has been granted a lower rate, so long as the difference does not distort competition between the two licensees.
Background
This case began in 2014 when Unwired Planet, a U.S.-based patent assertion entity, sued Google, Samsung and Huawei for infringement under six UK patents (corresponding actions were filed in Germany). Unwired Planet claimed that five of the asserted patents, which it acquired from Ericsson in 2013 as part of a portfolio comprising approximately 2000 patents, were essential to the 2G, 3G and 4G wireless telecommunications standards developed under the auspices of the European Telecommunications Standards Institute (ETSI). Because Ericsson participated in development of the standards at ETSI, any patents shown to be SEPs would necessarily be encumbered by Ericsson’s FRAND commitment to ETSI.
The UK proceedings involved numerous stages, including five scheduled “technical trials” which would determine whether each of the asserted patents was valid, infringed and essential to the ETSI standards. During these proceedings Google and Samsung settled with Unwired Planet and Ericsson (which receives a portion of the licensing and settlement revenue earned by Unwired Planet from the patents), leaving Huawei as the sole UK defendant. By April 2016 three of the technical trials had been completed, resulting in findings that two of the asserted patents were invalid and that two were both valid and essential to the standards. These findings are currently under appeal. The parties then agreed to suspend further technical trials. In October 2016 a “non-technical” trial began regarding issues of competition law, FRAND, injunction and damages. Hearings were concluded in December 2016, and the court’s opinion and judgment were issued on April 5, 2017.
A. The High Court’s Decision – Overview
The principal questions before the court were (1) the level of the FRAND royalty for Unwired Planet’s SEPs, (2) whether Unwired Planet abused a dominant position in violation of Section 102 of the Treaty for the Formation of the European Union (TFEU) by failing to adhere to the procedural requirements for FRAND negotiations outlined by the European Court of Justice (CJEU) in Huawei v. ZTE (2014), and (3) whether an injunction should issue in the case. In the below discussion, Paragraph numbers (¶) correspond to the numbered paragraphs in the High Court’s April 2017 opinion.
B. FRAND Commitments – General Observations
Justice Birss begins his opinion with some general observations and background about the standard-setting process and FRAND commitments. A few notable points emerge from this discussion.