decided on May 7, 2018 by the Court of Appeals for the Federal Circuit
review by J. Matt Buchanan | published May 7, 2018 | updated May 7, 2018
Following on the heels of its en banc decision in Wi-Fi One v. Broadcom, which held that inter partes review “time-bar determinations under [35 U.S.C.] § 315(b) are reviewable by this court,” the Court of Appeals for the Federal Circuit in WesternGeco v. Ion Geophysical Corporation considered the meaning of the term 'privy' in § 315(b). Conducting a full statutory construction analysis of the time bar provisions for inter partes review under the America Invents Act, the court concluded that the term 'privy' in 35 U.S.C. 315(b) should be given its common law meaning, which, historically, was "narrow and specific." Then conducting a common law analysis of an alleged relationship of privity, the court refused to view control as "the exclusive analytical pathway," explaining that control is "but one of a variety of considerations" for privity. Turning to the merits after affirming the decision of the Patent Trial and Appeal Board that the inter partes review petitions were not time-barred, the court considered an argument by the patentee that the claim term "control mode" should be construed to mean “a goal-oriented, automatic configuration.” The specification supported this construction, the patentee argued. The court disagreed, explaining that the provision of the specification offered as support for the limitation did not "make it proper" to read the "goal-oriented" and "automatic" limitations into the claims. Expanding on its reasoning, the court explained that the "goal-oriented" limitation adds nothing meaningful to the claim and the passage of the specification offered as support for narrowing the claim term "does not make clear that a control mode must be automatic."
Legislative history of America Invents Act supports conclusion that 'privy' of inter partes review time bar provision should be given its common law meaning
The time bar provision of the America Invents Act provides that "the USPTO may not institute an IPR where the petition is filed more than 1 year after the date on which the petitioner, the real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b) (emphasis in original).
The patentee argued that the petitioner was time-barred from seeking inter partes review because one of the petitioners was a privy of the other, which had been served with an infringement suit long before the one year bar date.
Conducting a full statutory construction analysis of the the time bar provision for inter partes review, the Federal Circuit concluded that the term 'privy' in 35 U.S.C. 315(b) should be given its common law meaning, which, historically, was "narrow and specific, denoting mutual succession or relationship to the same rights of property." The court agreed with the patentee that "control is not the exclusive analytical pathway for analyzing privity...it is but one of a variety of considerations."
Ultimately, the court affirmed the decision of the Patent Trial and Appeal Board that the relationship between the petitioner and prior infringement defendant was not sufficiently close such that the litigation suit would have given the petitioner a full and fair opportunity to challenge the validity of the patents at issue.
Refusal to read limitation into claims where limitation adds "nothing meaningful" and specification does not make clear that the limitation is necessary
The patentee argued that the claim term "control mode" should be construed to mean “a goal-oriented, automatic configuration.” As support for this construction, the patentee pointed to a passage in the specification that describes three control modes, arguing that each requires operation "in an automated and coordinated manner."
The court agreed with the decision of the Patent Trial and Appeal Board that the passage did not "make it proper to read limitations "like 'goal-oriented' or 'automatic' into the term 'control mode.' As support for this refusal to narrow the term, the court first noted that the proposed "goal-oriented" limitation adds nothing to the claim term since "any operation of a computer system or program would have a goal or desired result." Also, the passage offered as support for reading the limitations in to the claim "does not make clear that a control mode must be automatic."