Docket No. 2016-1325, -1326
TARANTO, CHEN, HUGHES
July 15, 2016
Brief Summary: SkyHawke appeal of Board confirmation of its claims because “claim construction relied on…to reach that decision should be corrected” dismissed (no issue preclusion and cannot appeal reasoning supporting Board’s final decision).
Summary: The PTAB denied Deca’s request for IPR of SkyHawke’s US 7,118,498 after finding the claims nonobvious over the cited prior art. SkyHawke appealed the PTAB’s decision, “arguing that the Board decision should be affirmed but that the claim construction relied on by the Board to reach that decision should be corrected by” the court. Deca moved to dismiss SkyHawke’s appeal for lack of jurisdiction. In confirming all of the Skyhawke’s claims, the Board construed “means…for determining a distance” of claim 5 and “identified particular algorithms in the ‘498 patent as providing the corresponding structure for that claim element”. The FC opinion explains that “[c]ourts of appeals employ a prudential rule that the prevailing part in a lower court tribunal cannot ordinarily seek relief in the appellate court” (Deposit Guar., US 1980) “[e]ven if the prevailing part alleges some adverse effect” from the ruling (California v. Rooney, US 1987 (SC refused to hear State’s appeal based that appellate court’s reasoning might harm its position at trial). The FC panel found that “SkyHawke’s appeal fits cleanly into this prudential prohibition.” It explained that “SkyHawke will be able to appeal any such unfavorable claim construction by the [DC] should that situation arise” and that it “cannot forsee how the claim construction reached by the Board in this case…could satisfy [the] ordinary elements” of “issue preclusion” (Kircher, US 2006 (no preclusion based on judgment that is not subject to appeal); Penda, FC 1994 (“It is axiomatic that a judgment is without preclusive effect against a party which lacks a right to appeal that judgment.”)) It also pointed out that “issue preclusion requires that ‘the issues were actually litigated’” (In re Trans Tex., FC 2007) and, here, the Board applied the broadest reasonable construction (BRC) standard while the DC applies the Phillips (FC 2005) standard so the claim construction issue “has not actually been litigated”. Thus, “judicial estoppel will not bind SkyHawke to the Board’s clcaim construction, because judicial estoppel only binds a party to a position is advocated and successfully achieved” which did not occur here (Zedner, US 2006). In addition, the Board’s claim construction “cannot create prosecution history disclaimer, at least because a party can avoid such disclaimer by opposing such statements when made by the Patent Office” (cf. Biogen Idec, FC 2013), “which SkyHawke has done here.” SkyHawke also argued pre-AIA 35 USC 141 (2006) allows a patent owner “who is…dissatisfied with the final decision in an appeal to the Board…may appeal the decision only to” the FC and that “it is dissatisfied”. The FC disagreed that “Congress intended the use of ‘dissatisfied with’ in conjunction with ‘final decision’ to broaden the appeal rights…to include those of prevailing parties who are merely dissatisfied with the Board’s reasoning” (“the opinion…is not the ‘decision’” (In re LePage’s, CCPA 1963)). And it distinguished the facts here from In re Priest (CCPA 1978). Thus, Deca’s motion was granted and SkyHawke’s appeal dismissed.