Sometimes Better Never Than Late

• Published date: 15 December 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Amanda Murphy, Stacy Lewis and Thomas Irving

This post discusses three cases that suggest a reversal of the old adage 'better late than never.'

Case 1

Polaris Innovations Ltd. V. Brent, No. 2019-1483, -1484 (Fed. Cir. Sept. 15, 2022), in which the Court of Appeals for the Federal Circuit ('the Federal Circuit') affirmed the Patent Trial and Appeal Board's ('the Board's') Final Written Decisions of unpatentability for IPR2017-01500 and IPR2017-00901.

Background

The case involved two IPR petitions filed by NVIDIA against two Polaris patents. The Board issued final written decisions holding all challenged claims unpatentable. After appealing both decisions, the parties settled, and the USPTO intervened in the appeals to defend the Board's decisions. The Federal Circuit vacated and remanded the decisions in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) (Arthrex I). On remand, the Board administratively suspended the IPRs pending potential Supreme Court action, and while suspended, the parties filed a joint motion to terminate the proceedings. While the IPRs were on remand, the Supreme Court decided United States v. Arthrex, Inc., 141 S. Ct. 1970 (Arthrex II), vacating the Federal Circuit's decision in Arthrex I. As a result, the Board's final written decisions in the two IPR proceedings were reinstated and led to a dispute regarding the joint motion to terminate that was filed during remand. Polaris argued that the Federal Circuit should vacate and remand for the Board to grant termination, but the USPTO opposed and suggested a limited remand for Director review, which the court granted. On remand, the Chief Administrative Judge determined termination was not appropriate, and the Acting Director denied rehearing.

Federal Circuit

On appeal, the Federal Circuit affirmed the Board's exercise of discretion to continue the IPRs. '[B]ecause the Board decided the merits of the IPR before Polaris filed its motion to terminate, Polaris's motion was untimely.' Id. at *12. See 35 U.S.C. ' 317(a). The Federal Circuit noted that there is no entitlement to termination of the proceeding itself, and 'the statute grants discretion to the Board to 'proceed to a final written decision under section 318(a)' even if 'no petitioner remains' in the proceeding.' Id. at *12-13. Thus, the plain language of the statute gives the Board discretion to carry on to a final written decision, even without any petitioner.

Case 2

NXP USA, Inc. v Impinj, Inc. IPR2021-01556, Paper 13 (P.T.A.B. Sept. 7...