This Federal Circuit Opinion[1] analyzes statutory estoppel under 35 U.S.C. § 315(e)(1) and examines offensive and defensive arguments related to § 103 obviousness.
Background
Gesture Technology Partners, LLC is the owner of U.S. Patent No. 7,933,431 (“the ’431 patent”), which generally claims a method for controlling a device based on a user’s gestures. In February 2021, Gesture filed a patent infringement lawsuit against Apple Inc., LG Electronics Inc., Google LLC, and others regarding the ’431 patent.
On May 14, 2021, Unified Patents, LLC, a multi-member organization of which Apple is a member, filed an Inter Partes Review petition against the ’431 patent, challenging a subset of the claims. On May 21, 2021, Apple, LG, and Google separately filed IPR petitions, which were eventually joined, challenging the patentability of all claims of the ’431 patent. Both the Unified IPR and Apple IPR relied on U.S. Patent No. 6,144,366 (“Numazaki”) as prior art, arguing the ’431 patent was obvious under 35 U.S.C. § 103 when combined with the knowledge of a person of ordinary skill in the art and/or at least one other prior art reference.
On November 21, 2022, based on the Unified IPR, the Board held claims 7-9 and 12 were unpatentable and claims 10, 11, and 13 were not unpatentable. On November 30, 2022, based on the Apple IPR, the Board held claims 1, 7, 12, and 14 were unpatentable and claims 11 and 13 were not unpatentable. Apple appealed, and Gesture cross appealed, the Apple IPR holdings.
35 U.S.C. § 315(e)(1) on estoppel states, “[t]he petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . , or the real party in interest or privy of the petitioner, may not . . . maintain a proceeding before the [Patent] Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” Gesture contended that Apple lacked standing to appeal because Apple was a real party in interest in the Unified IPR, which was decided before the Apple IPR. Accordingly, Gesture argued Apple was estopped and had no standing to appeal the final written decision issued in the Unified IPR. However, Gesture, despite knowing this fact for more than a year before the final written decision in the Unified IPR, did not raise the argument that Apple was a real party in interest in the Unified IPR proceeding during the Apple IPR proceeding.
With regard to claims 11 and 13, Apple’s claim construction, which the Board adopted, defined the claimed function “means for transmitting information,” in claim 11, as “at least a wireless cellular transceiver.” The Board found claims 11 and 13 were not unpatentable because Apple’s IPR petition lacked an explanation of how the “transmission unit” in Numazaki, alone or in view of the knowledge of a person of ordinary skill in the art, equates to the defined “wireless cellular transceiver” or a cell phone described in claim 13. Apple appealed this finding, arguing the Board applied the wrong legal standard for obviousness by considering only the explicit disclosure of Numazaki, and not considering the prior art in view of the knowledge of a person of ordinary skill in the art.
Finally, Gesture filed a cross-appeal, arguing that substantial evidence contradicted the Board’s invalidity decision. Gesture highlighted several terms it believed the Board failed to analyze correctly, particularly arguing that certain elements were not expressly disclosed in the prior art.
Issue(s)
- Did Apple have standing to appeal given the estoppel provision of 35 U.S.C. § 315(e)(1) and the previously decided Unified IPR?
- Did the Board apply the correct legal standard for obviousness and ignore Apple’s arguments in holding that Apple did not show claims 11 and 13 were unpatentable?
- Did the Board err by finding a claim obvious even though certain elements were not expressly disclosed in the prior art?
Holding(s)
- Gesture waived the argument that Apple lacked standing by not presenting it before the Board.
- The Board applied the correct legal standard for obviousness and properly considered Apple’s arguments, including not only the explicit disclosure in Numazaki but also how a person of ordinary skill in the art would have understood the disclosure, and thus correctly found that claims 11 and 13 were not shown to be unpatentable .
- The Board correctly found a claim to be obvious despite certain elements not being expressly disclosed in the prior art.
Reasoning
Whether Apple Was Statutory Estopped Under 35 U.S.C. Sec. 315(e)(1)
The Federal Circuit reiterated that an appellate court may not decide questions of fact in the first instance on appeal. This principle also applies to factual questions regarding the real party in interest. The Federal Circuit cited Acoustic Technology Inc. v. Itron Networked Sols., Inc., 949 F.3d 1360 (Fed. Cir. 2020), a similar case involving statutory estoppel under 35 U.S.C. § 315(b). In that case, the estoppel argument was unavailable because the patent owner did not make the common real party in interest argument to the Board, and thus waived the argument for purposes of appeal. The Federal Circuit held that the same outcome applies here, even though the estoppel here was based on a previous IPR decision, which occurred nine days earlier. The Federal Circuit held that the fact regarding the real party in interest was disclosed in the Unified Patents IPR more than a year before the final written decision. Accordingly, the court held that Gesture should have presented this argument to the Board during the IPR proceeding.
The Board Applied The Correct Legal Standard
The Federal Circuit found the Board correctly analyzed Numazaki, alone or in view of the knowledge of a person of ordinary skill in the art, and properly considered Apple’s evidence. The Federal Circuit held it is the petitioner’s burden to present a clear argument in the petition. The Board found, and the Federal Circuit agreed, that Apple failed to explain the evidence “with particularity” in the petition because the petition did not explain how the “transmission unit” in Numazaki, alone or in view of the knowledge of a person of ordinary skill in the art, equates to the defined “wireless cellular transceiver” or a cell phone. The Federal Circuit found the Board did not ignore Apple’s assertion regarding Numazaki in view of the knowledge of a person of ordinary skill in the art, but rather agreed with Gesture that Apple’s explanation was lacking. Accordingly, the Board applied the correct legal standard and correctly held claims 11 and 13 are not unpatentable.
Whether Elements Must Be Expressly Disclosed In The Prior Art
The Federal Circuit also addressed Gesture’s argument that claim elements need to be expressly disclosed in the prior art. The Federal Circuit relied on KSR Int’l Co. v. Teleflex Inc., where the Supreme Court held that express disclosures are not required to render a claim obvious. 550 U.S. 398, 418 (2007). The Federal Circuit further specified that Numazaki’s silence on how the claimed elements were implemented is irrelevant because, “in general, a prior art reference asserted under § 103 does not necessarily have to enable its own disclosure, i.e., be ‘self-enabling,’ to be relevant to the obviousness inquiry.” Accordingly, Gesture’s argument that Numazaki did not expressly disclose certain elements of the ’431 patent carried no weight.
FOOTNOTES