Posts Tagged: "statute of limitations"

In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co. the Federal Circuit ruled the time-bar for filing a petition for inter partes review in Section 315(b) begins to run as soon as a complaint for infringement is served in district court, regardless of whether the complaint is involuntarily or voluntarily dismissed or is ultimately successful on the merits. There are no exceptions to the statutory time limit for filing a petition for inter partes review in 35 U.S.C. § 315(b).

On Monday, September 25th, Zephyr Cove, NV-based patent owner VirnetX Holding Corporation filed a Form 8-K with the U.S. Securities and Exchange Commission (SEC) regarding an agreement between that firm and Cupertino, CA-based consumer electronics giant Apple on costs and prejudgment interest related to the ongoing patent infringement proceedings between the two companies. A press release attached to the Form 8-K indicates that VirnetX and Apple agree to add costs and prejudgment interest of $93.4 million to the $502.6 million patent infringement verdict awarded to VirnetX in district court.

On Friday, May 11th, U.S. District Judge Edward Davila entered an order deciding motions made in a copyright case involving competing musical productions based on the fictional story of the fictional folk hero Zorro. Judge Davila’s orders allows copyright infringement claims asserted by a writer who developed a Zorro musical in the 1990s to move forward against Zorro Productions, the entity which had licensed the Zorro character to entertainment companies going back to the late 1940s. This case is in the Northern District of California.

Inter Partes Review proceedings (IPRs) are subject to statutory timing provisions. The Court, sitting en banc, reviewed whether PTAB decisions determining whether an IPR was timely filed are appealable. More specifically, the Court considered whether the bar on judicial review of institution decisions, under Section 314(d), applies to the Board’s time-bar determinations, under Section 315(b)… Time-bar determinations by the patent office are reviewable by the Federal Circuit.

Today, the Federal Circuit reversed Achates, and ruled that time-bar determinations under § 315(b) are appealable. “We find no clear and convincing indication in the specific statutory language in the AIA, the specific legislative history of the AIA, or the statutory scheme as a whole that demonstrates Congress’s intent to bar judicial review of § 315(b) time-bar determinations,” wrote Reyna in the majority opinion, which included Chief Judge Prost and Circuit Judges Newman, Moore, O’Malley, Wallach, Taranto, Chen and Stoll. The lack of such a clear and convincing indication from Congress coupled with the strong presumption in favor of judicial review of agency actions lead the majority to hold that time-bar determinations under § 315(b) are appealable.

Luckily for Apple and Microsoft, however, VirnetX did not assert the ‘135 patent against Mangrove Partners, a hedge fund, which filed a petition for IPR against the ‘135 patent on April 14th, 2015; Mangrove reportedly shorted VirnetX stock around this time. On October 7th, 2015, the PTAB panel adjudicating the case decided to institute the IPR as the petitioner Mangrove had demonstrated a reasonable likelihood of proving invalidity of the challenged claims. Then in January 2016, Apple was successful in having its petition for IPR review of the challenged ‘135 claims joined to Mangrove’s IPR. VirnetX had objected to Apple’s motion for joinder based on the Section 315(b) language but the PTAB found that Section 315(b) did not apply to joinder motions which are governed by 35 U.S.C. § 315(c).

Equitable estoppel may be appropriate for the defendant in SCA v. First Quality since the plaintiff was silent for years after the defendant asserted invalidity (possibly fulfilling the misleading conduct through inaction and reliance on that conduct). But can equitable estoppel be relied upon as a defense against a dormant plaintiff in the example illustrated above? Below, we consider the two elements of equitable estoppel that replace the unreasonable delay element of laches: misleading conduct and reliance.

In a strong reversal of the Federal Circuit, the US Supreme Court held in SCA Hygiene Products Aktiebolag v First Quality Baby Products, LLC, No. 15-927 (March 21, 2017), that delay by a patentee will not give rise to a laches defense during the statutory six-year damages period under 35 U.S.C. § 286. Justice Samuel Alito authored the 7–1 majority opinion, extending the court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc. (2014), which held that laches is inapplicable for copyright infringement, a provision similar to Section 286 of the Patent Act… The Supreme Court noted that its determination regarding laches does not preclude a defense based on equitable estoppel…

The Hearing Order concluded that the parties raised sufficient issues of material fact to warrant the ready-to-go Hearing to determine when respondent’s alleged misconduct was actually “made known” to an officer or employee of the USPTO pursuant to §32. Thus, the Hearing would be able to afford the fact-finder the opportunity to assess the credibility of the witnesses and draw inferences from the facts. Further, as the parties were already prepared for the Hearing on the merits of the case, the Judge believed that he would entertain testimony on both the SOL issue and the disciplinary sanction sought by the OED Director. Thus, the Hearing Order determined that the Judge found issues of material fact existed as to when the misconduct forming the basis for the disciplinary proceeding was “made known” to an officer or employee of the Office.