“The passage of the AIA’s estoppel provision demonstrates Congress’ intent that the claim exclusion does not apply in the circumstances here.”
On Wednesday, April 4, the Patent Trial Board (PTAB) dismissed Intel’s motion to end Intel’s involvement in the VLSI case. between the parties Review of VLSI US Patent No. 7,725,759 (IPR).
In addition to Intel, OpenSky is also an IPR petitioner relating to claims 1, 14, 17, 18, 21, 22, and 24 of the ‘759 patent. VLSI continues to pursue this IPR due to March 2021 district court ruling finding Intel failed to prove invalidity of patent claims 14, 17, 18, and 24 claimed to have prevented
However, Intel has successfully argued that the claim exclusion does not apply thanks to the America Invents Act (AIA). It further argued that the IPR and district court proceedings did not involve the same accused product and had different standards of evidence.
PTAB said:
The patent story continues
VLSI and Intel are embroiled in extensive legal battles in multiple US jurisdictions and countries.
In March 2021, a jury for the West District of Texas awarded Intel to VLSI damages totaling $2.175 million for infringement of two patents, including $675 million for infringement of the ‘759 patent. ruled that it must. Intel tried to win a new trial for jury misconduct, but the motion was dismissed. In May 2022, the district court reaffirmed that Intel had not proved the claims of the ‘759 patent invalid.
Intel and VLSI have agreed to dismiss the VLSI litigation involving five different patents in December 2022. their identity from courts and the public.
OpenSky’s involvement in the ‘759 patent IPR also generated controversy. In October 2022, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal expelled OpenSky from the IPR process for “misusing” his IPR process. Director Vidal then reinstated his OpenSky in his IPR, but as a sanction against OpenSky he allowed VLSI’s legal fees.
AIA protection from claim exclusion
A recent dispute between VLSI and Intel revolves around which standard the PTAB should use in determining whether the exemption applies in this case. Intel argued that the PTAB should determine whether, when Congress passed the AIA in 2011, the exemption was intended to argue that he did not apply to IPR proceedings.
However, VLSI cited a 1991 US Supreme Court case. Astoria Federal Marshal. & Loan Ass’n v. Solimino It said this only applies if the authority’s decision precludes the court’s decision. Instead, VLSI wanted the PTAB to apply the “normal rules” of exclusion.
The PTAB found VLSI’s arguments unpersuasive, stating that “patent owners (VLSI) have misunderstood case law” and that “we Astoria standards should be applied. ”
Instead, the PTAB’s question was whether the AIA’s statutory estoppel provisions indicated Congress’ intent that exemptions should not apply to IPR proceedings such as those between Intel and VLSI. .
In the AIA’s language, the PTAB found that the claim exclusion was not explicitly applied in cases such as the Intel-VLSI case. The Commission wrote: “While the AIA expressly imposes an exclusion of claims in one direction from IPR to other proceedings, it does not impose an exclusion of claims in the other direction from district court litigation to Office proceedings. is not.”
Regarding Congress’ intentions, the Commission wrote: “The AIA essentially accepts the reality that parallel proceedings in district courts and offices may address overlapping issues related to asserted invalidity or unpatentability.”
In addition, the Board cited the AIA’s lower burden of proof in IPR proceedings than in district courts. This difference in burden of evidence, according to the PTAB, “provides the background for Congress to adopt exclusion of claims in only one direction.”
“Congress’s adoption of a one-way exclusion is significant and distinguishes AIA proceedings like this case from other PTO proceedings that also provide for statutory exclusion,” the Board continued.
For the PTAB, the AIA and Congress between the parties reconsideration to between the parties The review changed previous precedents for bidirectional exclusion. Additionally, AIA-enforced estoppel only limits litigation after IPR proceedings.
The PTAB therefore writes:
As a result, the board concluded that VLSI had failed to show that it should uphold the previous standards and dismissed the company’s motion to exclude Intel from the IPR.
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Author: Ropixel
