Docket No. 2015-1726, -1727
LOURIE, PLAGER, STOLL
September 23, 2016
Brief Summary: Husky’s appeal regards “whether assignor estoppel may bar a party from filing a petition for” IPR was dismissed for lack of jurisdiction. Board decision of no anticipation because prior art did not properly incorporate other prior art by reference vacated and remanded.
Summary: Husky appealed PTO IPR decision that certain claims of US 7,670,536 relating to a molding machine are invalid as anticipated. Athena cross-appealed decision finding certain ‘536 claims not anticipated. Husky’s appeal regards “whether assignor estoppel may bar a party from filing a petition for” IPR. Husky argued “Athena is in privity with Schad, the assignor of the ‘536 patent, and, as such, is estopped from challenging the claims” (“assignor estoppel operates to prevent ‘one who has assigned the rights to a patent (or [a] patent application) from later contending that what was assigned’ lacks value” (Diamond Sci., FC 1988)). The FC opinion reviewed several earlier challenges regarding its ability to review Board decisions to grant or deny a request for IPR. It explained that a two-part inquiry must be used to answer this question: 1) determine: a) whether the challenge at issue is ‘closely tied to the application and interpretation of statues related to the Patent Office’s decision to initiate [IPR]” (in which case “§ 314(d) forbids [the FC’s] review”), or” b) “if it instead ‘implicate[s] constitutional questions,’ ‘depend[s] on other less closely related statutes,’ or ‘present[s] other questions of interpretation that reach, in terms of scope and impact,’ ‘well beyond ‘this section’” (Cuozzo II, US 2016) (in which case, the FC’s “authority to review the decision to institute appears unfettered”); and, 2) determine whether “despite the challenge being grounded in a ‘statute closely related to that decision to institute,’…it is nevertheless directed to the Board’s ultimate invalidation authority with respect to a specific patent” (if yes, then the FC may review the challenge). Using this test, the FC panel “conclude[d] that the question” Husky raises “does not fall into any of the three categories the Supreme Court specifically mentioned as reviewable” and “[n]othing about the question implicates a constitutional concern such as a due process violation, and no party contends as much.” It also found the question does not “depend on other less closely related statutes” (the equitable doctrine of “assignor estoppel does not derive from statute” (Diamond Sci., FC 1988)) and that the question does not relate “to the Board’s ultimate invalidation authority”. Thus, it dismissed Husky’s appeal and expressed “no opinion on the merits of the Board’s decision that assignor estoppel may not bar an assignor…from petitioning for” IPR. Athena’s appeal regarding anticipation related to whether the prior art incorporated another prior art document by reference (Adv. Display, FC 2000; Harari, FC 2011 (“we assess whether a skilled artisan would understand the host document to describe with sufficient particularity the material to be incorporated”)). The Board found the first reference did not properly incorporate the second but the FC panel disagreed (“Glaesener identifies with sufficient particularity what it incorporates from Choi”). Since the “Board provided no further reasoning” supporting its conclusion, the decision of anticipation was vacated and remanded.