Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about:
Federal Circuit Addresses Waiver of Argument Not Raised in Request for Rehearing
In a recent precedential decision, the U.S. Court of Appeals for the Federal Circuit upheld the PTAB decision that all claims of U.S. Patent No. 10,491,679 for “Using voice commands from a mobile device to remotely access and control a computer” were unpatentable for obviousness. But in doing so, the court also found that patent owner Voice Tech Corp. did not forfeit certain claim construction arguments that were omitted from the company’s request for rehearing.
In an IPR brought by Unified Patents, the PTAB held in 2021 that the claims of Voice Tech’s patent were rendered obvious by a combination of two existing patents. Voice Tech requested rehearing, which was denied.
On appeal to the Federal Circuit, Voice Tech argued that the Board had misinterpreted certain claim terms. However, Unified Patents responded that Voice Tech had not raised these arguments in the request for rehearing and therefore had forfeited the arguments on appeal. The Federal Circuit held that Voice Tech had not waived the arguments, though ultimately it upheld the Board’s decision that the Voice Tech’s patent claims were obvious.
In ruling in Voice Tech’s favor on the issue of preserving its arguments, the Federal Circuit noted that a party is not required to request rehearing before appealing a PTAB decision. Although a request for rehearing must “identify all matters the party believes the Board misapprehended or overlooked,” the court stated that this does not require the party “to regurgitate all arguments the Board had already considered and rejected, simply to preserve them for appeal.”
In accepting Voice Tech’s claim construction arguments, the court distinguished a nonprecedential 2019 decision, Polycom, Inc. v. Fullview, Inc., 767 F. App’x 970 (Fed. Cir. 2019), in which a party was found to have waived an anticipation argument by not raising it on request for rehearing. “In Voice Tech, the PTAB seems to have understood and considered the parties arguments, and then simply disagreed on the claim construction outcome,” wrote Dennis Crouch on the Patently-O blog. “Unlike in Polycom, the PTAB had already had the opportunity to fully consider and address Voice Tech’s arguments. Thus, no waiver.”
No Conflict of Interest in IPR Brought by Former Client of Director Vidal
Prior to becoming the Director of the USPTO, Kathi Vidal had a long career in private practice as a patent litigator. A Federal Circuit decision in August held that her work as a private practitioner representing IPR petitioners did not deprive patentee Unification Technologies LLC (UTL) of due process.
Micron Technology Inc., Micron Semiconductor Products, Inc., Micron Technology Texas, LLC, Dell Technologies Inc., Dell, Inc., and HP Inc. filed requests for IPR of three UTL patents in 2020. Vidal signed the petitions and was listed as lead counsel for petitioners. In the fall of 2021, President Joe Biden nominated her as director of the USPTO. She continued to represent the petitioners but was not included in the signature block for subsequent briefs.
After petitioners’ reply briefs were filed, Vidal withdrew as counsel. Approximately two months later, she was confirmed and sworn in as director of the USPTO. Oral argument on the IPRs was held the same day she was sworn in. A week later, she submitted a recusal memo setting forth procedures for actual or potential conflicts of interest.
UTL moved to dismiss the IPRs based on Vidal’s conflict of interest, but the motions were denied. In final written decisions on the IPRs, the PTAB held that certain challenged claims of U.S. Patent Nos. 8,533,406 and 8,762,658 and all challenged claims of U.S. Patent No. 9,632,727 were unpatentable. The decisions noted that Vidal was recused from the matters.
On appeal, UTL argued that as “boss” of administrative patent judges, Vidal handled performance reviews and therefore the judges had a pecuniary interest in agreeing with the arguments she had submitted when she was in private practice. The Federal Circuit reviewed UTC’s due process arguments de novo and held that UTL’s rights were not violated.
“UTL’s theory fails because it has provided no evidence that the Director controls APJ bonuses or performance reviews. To the contrary, the Patent Office explained at oral argument that its internal operating procedures do not contemplate any involvement by the Director in APJ bonus determinations,” the Federal Circuit’s decision noted.
