Federal Circuit Patent Watch: Raising a new prior art reference in an IPR as a joined petitioner 

Federal Circuit Patent Watch: Raising a new prior art reference in an IPR as a joined petitioner 

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Precedential and Key Federal Circuit Opinions

1.  CYWEE GROUP LTD. v. ZTE (USA) INC., LG ELECTRONICS INC. [OPINION] (2021-1855, 1/18/2023) (Prost, Hughes, and Stoll)

Prost, J. The Court affirmed the Patent Trial and Appeal Board’s (“Board”) decision finding that certain claims of U.S. Patent No. 8,441,438 (“the ’438 patent”) were unpatentable and denying CyWee Group LTD’s (“CyWee”) motion to amend its claims. ZTE (USA), Inc., (“ZTE”) filed an IPR petition challenging certain claims of the ’438 patent. After institution, and more than a year after CyWee sued LG Electronics Inc. (“LG”), LG filed an IPR petition challenging the ’438 patent and moved to join ZTE’s ongoing IPR. While LG’s motion for joinder was pending, CyWee moved to amend its claims, contingent on cancellation of the original claims. CyWee asserted that “the Board erred by allowing LG to (1) oppose CyWee’s motion to amend in a manner that allegedly violated the terms of LG’s joinder and (2) raise [a new prior art reference] in opposition to the revised motion to amend.” 

First, the Court explained “the Board did not err by allowing LG to oppose the revised motion to amend in the manner it did” because “[w]hen the Board allowed LG to oppose CyWee’s revised motion to amend, the Board concluded that although ZTE still participated in the IPR, the proceeding ‘no longer appear[ed] to be meaningfully adversarial’ as to the revised motion to amend.” Second, the Court explained that while 35 U.S.C. § 315(c), the statutory provision governing IPR joinder, “does not authorize the joined party to bring new issues . . . into the existing proceeding’,” the “limitation exists because, among other reasons, ‘[t]he already-instituted IPR to which a person may join as a party is governed by its own petition and is confined to the claims and grounds challenged in that petition.’” The Court explained that “[a] motion to amend is different” because “[t]he principle that the IPR statutory provisions permit consideration of only the grounds in the petition does ‘not apply in the context of motions to amend where the patent owner has introduced new claims into the proceedings.’”

2.  ROKU, INC. v. INTERNATIONAL TRADE COMMISSION [OPINION] (2022-1386, 1/19/2023) (Dyk, Hughes, and Stoll)

Hughes, J. The Court affirmed the decision of the International Trade Commission which found Intervenor Universal had ownership rights to assert U.S. Patent No. 10,593,196 (“the ’196 patent”) and satisfied the economic prong of the domestic industry requirement. 

First, the Court rejected Roku’s assertion that Universal lacked standing to assert the ’196 patent because, at the time Universal filed its complaint, it did not own all rights to the ’196 patent. Initially, the administrative judge granted Roku’s motion, finding that a 2004 agreement between the inventor and Universal was a “mere promise to assign rights in the future, not an immediate transfer of expectant rights.” The Commission then reversed, finding instead that in a separate 2012 agreement, the inventor assigned all his rights to a series of provisional applications, including the one to which the ’196 patent claims priority, and that he did not contribute any new or inventive matter to the ’196 patent after filing the provisional applications. The Commission ultimately found that the 2012 agreement constituted a “present conveyance” of the inventor’s rights in the ’196 patent, and thus Universal could assert the ’196 patent. The Court agreed with the Commission. 

Second, the Court determined that the Commission correctly found that Universal satisfied the economic prong of the domestic industry requirement. Roku asserted that the Commission erred because it did not require Universal to allocate its domestic industry expenses to a specific domestic industry product. The Court determined the Commission’s findings are supported by substantial evidence, such as data regarding Universal’s specific domestic investments in QuickSet, which involves software and software updates that result in practice of the asserted claims when implemented on the Samsung domestic industry products, and the amount of Universal’s domestic R&D investments relative to its total R&D expenditures.


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