Uniloc v Facebook, Whatsapp
UNILOC 2017 LLC, Appellant v. FACEBOOK INC., WHATSAPP, INC., Appellees
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017- 01427, IPR2017-02087.
Uniloc 2017 LLC (Uniloc) appealed from two consolidated inter partes review (IPR) decisions of the Patent Trial and Appeal Board (Board) finding certain claims of U.S. Patent No. 8,995,433 (Patent) as obvious. Facebook petitioned to join an IPR initiated by Apple, Inc. challenging claims 1-6 and 8 of the Patent. LG Electronics Inc. (LG) also petitioned to join both of Facebook’s IPRs. This scenario presented a possible statutory estoppel issue.
A primary issue in the appeal was whether 35 U.S.C. § 314(d)’s “No Appeal” provision prevented the Court’s review of the Board’s conclusion under the estoppel provisions of § 315(e)(1). The Court found that “under the circumstances” of this case, it was not precluded from reviewing the Board’s estoppel decision. The Court also determined that the Board did not err in finding that LG was not estopped from maintaining its IPR challenge to claims 1–8, and that Facebook and WhatsApp (collectively, Facebook) were not estopped from challenging claim 7. The Court also affirmed the Board’s obviousness conclusions.
The Court engaged in a detailed discussion of cases that have construed § 314(d), starting with Cuozzo. While noting “the strong presumption of reviewability of agency action, we see no indication that § 314(d) precludes judicial review of the Board’s application of § 315(e)(1)’s estoppel provision in this case, in which the alleged estoppel-triggering event occurred after institution.” The Court indicated that it saw the “IPR estoppel provision of § 315(e)(1) as not so closely tied to institution to render judicial review precluded when the estoppel-triggering event arises after institution.”
The Board found that Facebook was estopped from challenging claims 1-6 and 8 that were challenged in the Apple IPR. Uniloc posited that LG was therefore estopped from in participating in the IPR as being “an RPI or privy” of Facebook. In discussing the application of § 315(e)(1), the Court stated that there is no bright-line test for determining real party in interest (RPI). The “inquiry has a dual-focus on preventing the petitioner from now lodging a successive attack for which it already had a first bite, thus, protecting the defending party from an unwarranted second attack, while also ensuring that the petitioner is not unfairly limited in its ability to lodge its challenges if it has not had a full and fair opportunity to do so already.” Estoppel does not apply “merely by way of joinder as a party.” The Board’s finding that LG was not an RPI or privy of Facebook was supported by substantial evidence according to the Court. LG was not estopped from participating in the IPR as a result of Facebook’s participation in the Apple IPR.
Uniloc also posited that Facebook was estopped from challenging claim 7 of the Patent because the Board found that Facebook was estopped from challenging claims 1-6 and 8. “Section 315 explicitly limits the estoppel to the claims previously challenged and for those proceedings that resulted in a final written decision.” Since claim 7 was not at issue in the Apple IPR, Facebook was able to challenge that claim in the proceeding that is the subject of the appeal.
Read more: Federal Bar member attorneys may access the full case summary by registered patent attorney B.C. “Bill” Killough in the March 2021 issue of Federal Circuit Case Digest
B.C. Killough is a registered patent attorney based in Charleston, SC. On behalf of his clients, Bill has obtained more than 300 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.