Papst Licensing GmbH & Co. KG v. Samsung Electronics America, Inc. et al.
Docket No. 2018-1777 (IPR2016-01733)
PROST, NEWMAN (D), DYK
May 23, 2019
Brief summary: Papst’s appeal following IPR obviousness decision barred by issue preclusion, and Board claim construction and obviousness determination found not to be erroneous.
Summary: Following Samsung’s requested IPR proceeding against Papst’s US 9,189,437 directed to “an interface device for communication between a data device (one one side of the interface) and a host computer (on the other)”, the USPTO (“Board”) determined the claims are unpatentable for obviousness in view of “US 5,758,081 (Aytac) (“[t]he key piece of prior art”), a publication setting forth standards for the Small Computer System Interface-2 (SCSI), and “admitted prior art”. The FC panel opinion points out that the ‘437 patent is related to US 6,470,399 and 6,895,449 disputed in Papst (FC 2015), and “[o]f significance here, that same specification also gave rise to Papst’s U.S. Patent Nos. 8,966,144 and 8,504,746.” “[C]entral to Papst’s appeal” is the Board’s construction of the limitation that automatic file transfer occurs “without requiring” “the end user” to “install or load specific drivers or software”, and its rejection of “Papst’s contention that” those limitations “prohibit an end user from installing or loading other drivers”, relying on CellzDirect (FC 2012). This, the Board determined, was taught by Aytac. The FC panel explained that “six weeks before the Board rendered its ‘437 Patent Decision”, it issued FWDs finding the challenged ‘144 and 746 patent claims unpatentable on the same grounds here, and that Papst voluntarily dismissed its appeals of those IPR decisions, which “therefore became final.” In this appeal, Papst argued that the Board erred in its construction of the “without requiring” limitation and that the Board’s finding and Aytac teaches automatic file transfer without user-added software (“CATSYNC”) was not supported by substantial evidence (a third argument was dismissed as not preserved (In re NuVasive, FC 2016). Papst’s two arguments were rejected by the FC panel as “barred by issue preclusion” and “on the merits”. The FC panel explained that SCOTUS “has made clear that issue-preclusion principles apply in a court case even when the first ‘action’ was before an agency if the agency proceeding meets certain standards”, including this IPR proceeding (B&B Hardware, US 2015 (“actually litigated and determined by a valid and final judgment”, “essential to the judgment”, and “conclusive in a subsequent action between the parties, whether on the same or a different claim”); MaxLinear, FC 2018; Soverain, FC 2015 (discussing grounds for denying preclusive effect such as “inadequate representation” or “impaired opportunity to litigate”)). For instance, the FC panel held that “[t]he ‘144 Patent Aytac Decision” resolved the same claim construction and “Aytac-teching issues” considered here, and “were essential to the Board’s decision.” On the merits, the FC panel also agreed with the Board’s constructon of the “without requiring” limitations (e.g., “[t]he specification is decisive”) and conclusions regarding “what Aytac teaches”. Thus, the Board decision was affirmed.