IPR Joinder Estoppel (Sometimes)

Uniloc 2017 v. Facebook (Fed. Cir. 2021)

The PTAB sided with Facebook in this inter partes review proceeding.  Finding most of the claims in Uniloc’s US8995433 unpatentably obvious.  On appeal, Uniloc raised two main issues:

1. Procedure: Whether Facebook, as well as WhatsApp and LG, should have been estopped from bringing the IPR challenges under 35 USC § 315(e)(1).  Inherent to this question is whether the estoppel question is barred by the “no appeal” provision of Section 314(d).
2. Substance: Whether the PTAB erred in its determination that the claimed instant-voice-messaging system would have been obvious as of the 2003 priority filing date.

Estoppel: Under Section 315(e)(1), a petitioner “may not request or maintain” an inter partes review proceeding as to any ground that petitioner “raised or reasonably could have raised” in a prior IPR that resulted in a final written decision as to the same patent claim.   Basically, this provision is designed to prohibit a patent-challenger from making multiple successive attempts to challenge a patent in an IPR.

The procedure of this case is a bit confusing.  BASICALLY, Apple filed for IPR that was subsequently joined by FB;  FB filed its own IPR that was subsequently joined by LG.  The Apple case concluded first (with a Final Written Decision siding with Uniloc). The question then is the extent that FB and LG are estopped maintaining the FB IPR.

After deciding the Apple IPR, the PTAB gave effect to § 315(e)(1) estoppel — holding that FB could no longer pursue its own IPR challenges as to claims challenged in the Apple IPR.   Although FB was knocked-out as a party as to most claims (all but Claim 7), the PTAB continued the FB IPR with LG as the remaining party.  On appeal, Uniloc argued that LG should not have been permitted to continue the case because of the way it joined-cause with FB in the joinder motion.  The appellate panel rejected that argument and affirmed LG was not a RPI to FB’s IPR petition or privy of Facebook. “[J]ust because LG expressed an interest in challenging the ’433 patent’s patentability, through its filing of its own IPR petition and joinder motion, does not by itself make LG an RPI to Facebook’s IPR.”  The court also affirmed that 315(e)(1) estoppel only applied to claims challenged in the Apple IPR — thus FB was not estopped from maintaining a challenge to claim 7.  “Section 315 explicitly limits the estoppel to the claims previously challenged.”

Right to Appeal: Before delving into those merits, the court first determined that the case was appropriate for an appeal despite the no-appeal provision of Section 314(d) (“The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”).   Here, the appellate panel found no problem with hearing the appeal because the estoppel question at issue was triggered after institution.

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.

Slip Op. (citing Credit Acceptance where a cause for termination arose after institution).

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On the merits of obviousness, the court also affirmed — finding that the Facebook expert’s testimony provided substantial evidence to support the PTAB’s obviousness factual findings.