Docket Nos. 2017-1525, -1577 (IPR2015-00978)
PROST, SCHALL, CHEN
Nov. 9, 2018
Brief summary: Board IPR decision remanded for reconsideration under FC panel’s revised claim construction. Board decision that assignor estoppel does not apply to IPRs affirmed.
Summary: Arista and Cisco appealed different aspects of the Board’s IPR decision upholding some of the challenged claims of Cisco’s US 7,340,597 related to devices for ensuring network device security as patentable and others invalid for anticipation or obviousness. The Board construed the claim term “broadcast” as “requiring a broadcast transmission to be delivered to all network devices” and both Arista and Cisco appealed this construction (a question of law reviewed de novo (SimpleAir, FC 2016) using the “broadest reasonable construction” under which the “words of claim must be given their plain meaning, unless…inconsistent with the specification and prosecution history” (Trivascular, FC 2016 (note: this standard is changing to the Philips (FC 2005) ordinary meaning standard as of Nov. 13, 2018); claim terms may be defined “by implication” (In re Abbott, FC 2012; Homeland Housewares, FC 2017 (cert. denied US 2018)). The FC panel agreed “that the Board’s construction cannot stand” because it “ignore[s] the patentee’s use of ‘broadcast’” and “excludes the only disclosed embodiment of broadcasting” (GE Lighting, FC 2014). But the FC panel also rejected “Arista’s construction as being overly broad” and Cisco’s as “nothing in the specification suggests Cisco’s proposed negative limitation is a required part of the contemplated ‘broadcast’”. Instead, the FC panel construed “the term based on the specification’s consistent focus on broadcasting via a multicast address” and therefore remanded the decision to the Board for consideration under this construction.
The FC opinion explains that Dr. David Cheriton assigned the ‘597 patent to Cisco during his employment there, and later founded Arista. In making its decision, “the Board declined to apply the doctrine of assignor estoppel, which is Cisco’s view should have prevented Arista from challenging the patent’s validity.” In Husky (FC 2016), an FC panel found “the question of whether assignor estoppel” not to be reviewable under § 314(a) Cuozzo (US 2016) but this FC panel found that under “the now-governing reasoning in Wi-Fi One” (FC 2018) the FC is allowed to review § 314 issues that are not “closely related to the preliminary patentability determination or the exercise of discretion not to institute” (i.e., the “threshold requirement for institution”). As such, the FC panel determined “that, like the time-bar in § 315(b), the issue of whether § 311(a) contemplates application of assignor estoppel is reviewable.” Cisco argued assignor estoppel (i.e., a party who assigns a patent to another (or that party’s subsequent employer) cannot challenge the validity of the assigned patent later (Mentor Graphics, FC 1998)) can be applied in the IPR context but the Board disagreed. The FC panel agreed with Arista’s argument “that § 311(a) unambiguously leaves no room for assignor estoppel in the IPR context, given that the statute allows any person ‘who is not the owner of a patent’ to file an IPR.”