Board denial of IPR dismissal after Arthrex II, claim construction, and invalidity decisions affirmed

Polaris Innovations Limited v. USPTO

Docket No. 2019-1483 (IPR2017-01500), 2019-1484 (IPR2017-00901) (


September 15, 2022

Brief Summary:   Board denial of join request to dismiss IPRs following Arthrex II, claim construction (BRC as pre-Nov. 23, 2018), and invalidity decisions affirmed. Summary:  This decision relates to appeals of two PTAB (“Board”) IPR findings that NVIDIA shows Polaris’ US 6,532,505 and 7,405,993 relating to computer memory unpatentable.  The FC remanded the original decisions based on the Appointments Clause and its Anthrex (FC 2019, “Anthrex I”) decision that was subsequently vacated by SCOTUS (US 2021, “Anthrex II”). Between the Anthrex I and Anthrex II decision, the Board administratively suspended the IPRs and Polaris and NVIDIA jointly requested termination of the proceedings.  After Anthrex II, the FC “asked Polaris to explain ‘how it believes its case should proceed in light of Arthrex [II]’” and Polaris asked for it to be vacated and returned to the Board for termination.  The Board disagreed and the FC panel remanded “for the limited purpose of allowing the parties to seek further action by the Director.”  The Board then decided termination was not appropriate because “the ‘final written decision in each of these cases is not vacated, and it is not necessary for the Board to issue a new final written decision in either of these cases’”, effectively denying the termination motions.  The Director then denied Polaris’ requests for rehearing, which Polaris appealed to the FC.  In this appeal, Polaris “argues that the Board erred by failing to grant the joint motions to terminate filed in both proceedings before the Board on remand”, “misconstrued the term ‘memory chip’ in the IPR involving the ’993 patent”, and “misconstrued the term ‘resource tag buffer’ in the IPR involving the ’505 patent.”  The FC panel explained that “[t]he motion-to-terminate issue ultimately turns on interpretation of 35 U.S.C § 317—which governs settlement of IPRs at the Board—and is therefore a question of law that we review de novo” (VirnetX, FC 2019), it ““set[s] aside actions of the Board that are arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law” (In re Sullivan, FC 2004; 5 USC section 706(2)(A)), and the IPRs are were filed before November 13, 2018 and therefore reviewed under the broadest reasonable claim construction standard (post-Nov. 13 IPRs are reviewed under Phillips, FC 2005) (Microsoft, FC 2015; Realtime Data, FC 2019).  The FC panel found the Board “properly exercised its discretion to terminate” under section 317 of Title 35 and “is only mandatory so long as the request for termination is filed before ‘the Office has decided the merits of the proceeding’” (“the Board correctly identified Polaris’s motion as untimely”; e.g., “at best, the statute provides for mandatory termination with respect to a petitioner, not termination of the proceeding itself”).  Regarding the Board’s claim construction decisions, the FC panel agreed Polaris did not present intrinsic evidence supporting its position “to limit the broad claim language” (Thorner, FC 2012 (disclosure of single embodiment not enough, “patentee must ‘clearly express an intent’ to redefine the term”); Liebel-Flarsheim, FC 2004 (cannot read limitations from preferred embodiment); Board did not violate the principle of claim differentiation).  The FC panel also found the Board’s invalidity decision to be supported by substantial evidence.  It therefore affirmed the Board’s decision.

This entry was posted in Appeal, Claim Construction, Claim Differentiation, Expert Testimony, Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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