A pair of recent decisions, one from a federal district court and another from the PTAB, highlight the potential of inconsistent results regarding patent validity. In Microwave Vision, S.A. v. ETS-Lindgren Inc., Civ. Action No. 1:14-CV-1153-SCJ (D. Ga. Sept. 20, 2016), the court denied an accused infringer’s (ETS’s) motion for summary judgment of invalidity, after addressing and ultimately disagreeing with the Board’s analysis of the patent in a parallel IPR. The Board opined, but did not decide, that the same patent claims may be invalid for indefiniteness and decided not to institute an IPR. This seemingly places a patent challenger in a Catch 22 position insofar as the Board won’t institute IPR to address prior art patentability because it cannot construe the claim, yet the court won’t conclude the claim is indefinite because it disagrees with the Board.
Claim 12 of the challenged patent contained a means-plus-function limitation, reciting a “means for pivoting one or more of the network of probes and the support.” The court construed this limitation in its Markman order as providing the function of “pivoting the network of probes, the support, or both.” ETS argued that the proper construction would require both the network and the support to pivot, not just one or the other, however, the court disagree with this proposed construction. The court further determined that the patent disclosed adequate structure corresponding to the claimed function.
In a subsequently-filed IPR petition, ETS proposed the same claim construction that the court previously rejected. The Board denied the petition on the basis that the petition failed to identify a structure corresponding to the function of pivoting both the network and the support. The Board went one step further and noted that the patent’s specification did not clearly associate the combination of separate structures disclosed in Figures 1 and 2 to achieve the dual function of pivoting the network of probes and pivoting the support. Accordingly, the Board concluded that neither the claimed function proposed by ETS nor the claimed function proposed by the patent owner had corresponding structure. The Board’s decision is an interesting contrast to its recent decision in Apple Inc. v. OpenTV Inc., Case IPR 2015-00969 (PTAB Sept. 20, 2016), where the Board refused to determine whether the claims it construed recited an invention that the specification adequately described.
The court noted that it was not bound by precedent or by the ‘analytical heft of the PTAB decision’ to reverse its prior finding of no indefiniteness.
ETS returned to the court with the PTAB decision, filing a motion for summary judgment that the challenged patent was indefinite, consistent with the Board’s unappealable conclusion that the patent lacks disclosure of structure corresponding to the recited function. The court concluded that “the PTAB and this Court simply disagree that the 170 Patent fails to ‘clearly associate’ the structures in Figures 1 and 2 with the ‘both’ pivot function,” and thus denied ETS’s motion. (p. 21).
The court’s decision illuminates the balancing act that courts face between deferring to the technical and legal expertise of the Board and standing by their own decisions. The court acknowledged that “[t]he opinion of an expert body like the PTAB can carry significant persuasive weight when courts deal with technically complex issues, like patents.” However, the court concluded that it was not bound by precedent or by the “analytical heft of the PTAB decision” to reverse its prior finding of no indefiniteness. (p. 21).
Practitioners engaged in parallel patent proceedings in front of a federal court and the Board should take this decision as a reminder that incongruent outcomes are possible when addressing similar issues in both proceedings.