Victory for Broadcom as Fed Circuit affirms invalidation of internet patents
The US Court of Appeals for the Federal Circuit has upheld decisions by the US Patent and Trademark Office (USPTO) which invalidated three internet technology patents at the request of Broadcom.
Circuit Judge William Bryson delivered judgment at the appeals court on Friday, April 20.
In 2010 Ericsson, which owned the three patents before Wi-Fi One, filed a patent infringement lawsuit against several computer networking companies at the US District Court for Eastern District of Texas.
The jury found that the patents (US numbers 6,772,215, 6,424,625, and 6,566,568), which related to internet router technology, had been infringed.
After judgment was entered in 2013, semiconductor developer Broadcom requested inter partes reviews (IPRs) of the three patents. Although Broadcom had manufactured some of the chips which formed the basis of the infringement action, it had not been listed as a defendant in the district court matter.
The Patent Trial and Appeal Board (PTAB) found that claims of Wi-Fi One’s three patents were invalid on the grounds that they lacked novelty. In response, Wi-Fi One argued that Broadcom’s petition for IPRs was time-barred.
Under 35 USC s. 315(b) the defendants in the litigation would have been barred from seeking IPRs of the claims involved in the dispute, as they did not petition for the reviews within a year of being served the infringement complaint.
Wi-Fi One claimed that, as Broadcom was “in privity” with the parties involved in the litigation, its request for IPRs should have been dismissed for the same reason.
However, the PTAB said that Broadcom was not “a real party in interest or privy” in relation to the litigation and that Wi-Fi One failed to prove otherwise.
Wi-Fi One appealed and asked the court, en banc, to review whether judicial review is available for a patent owner seeking to challenge a PTAB determination that IPR petitions satisfied the timeliness requirement. In January 2017, the court agreed to hear the case as requested.
In January 2018 the appeals court overturned the PTAB’s decision that time-bar determinations in IPRs cannot be appealed, granting Wi-Fi One permission to argue that Broadcom’s challenges to its patents had been submitted to the USPTO too late.
On Friday, Bryson confirmed that Wi-Fi One had “failed to show that Broadcom had sufficient control over the district court litigation to justify treating Broadcom as a virtual party to that proceeding”.
It also rejected Wi-Fi One’s argument that the PTAB erred in its interpretation and analysis of the ‘215 patent’s claims to find that it lacked novelty.
Bryson said Wi-Fi One’s proposed construction of one of the claims was “unreasonable” and the board was therefore correct to find that the ‘215 patent lacked novelty.
The appeals court confirmed that the three patents were correctly invalidated by the PTAB, and ordered each party to bear its own costs.
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