This is decision on appeal from PTAB case IPR2016-00636. The PTAB held that AVX had failed to establish unpatentability of some claims (“upheld claims”). AVX appealed. The Federal Circuit concluded that AVX lacked standing, and dismissed.
Legal issue: 35 USC 315(e), statutory estoppel, applicability to a party lacking standing to appeal from a PTAB decision.
The Federal Circuit’s review of the facts pertaining to lack of standing covers no newground. However, the Federal Circuit addressed, AVX’s second argument for standing as a result of the harm caused by IPR estoppel, noting that it was not yet decided whether 315(e) estoppel applied to a party lacking standing to appeal an adverse PTAB decision.
Second, this court has not decided whether the estoppel provision would have the effect that AVX posits—specifically, whether § 315(e) would have estoppel effect even where the IPR petitioner lacked Article III standing to appeal the Board’s decision to this court. For this court to so hold, we would have to consider whether that reading of § 315(e) is tied to § 319’s right of appeal for any “party dissatisfied with the final written decision” of the Board. [AVX Corporation v. PresidioComponents, Inc., 2018-1106 (Fed. Cir. 5/13/2019).]
Relatedly, we would also have to consider whether § 315(e) should be read to incorporate a traditional preclusion principle—that neither claim nor issue preclusion applieswhen appellate review of the decision with a potentially preclusive effect is unavailable. See Penda Corp. v. United States, 44 F.3d 967, 973 (Fed. Cir. 1994)(“It is axiomatic that a judgment is without preclusive effect against a party which lacks a right to appeal that judgment.”); see Kircher v. Putnam Funds Tr., 547U.S. 633, 647 (2006); SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373,1376 (Fed. Cir. 2016). We have not addressed those and other considerations bearing on the proper application of § 315(e). [AVX Corporation v. PresidioComponents, Inc., 2018-1106 (Fed. Cir. 5/13/2019).]
We decline to do so here. The parties have not briefed the issue; indeed,we have no adversarial presentations on the issue, because AVX assumes estoppel as a predicate for its standing argument and Presidio has evidently decided not to give up a possible future estoppel argument. If, in the future, a live controversy over the upheld claims arises between Presidio and AVX, and if either an infringement action or declaratory judgment action involving those claims is filed in district court, AVX can, in such an action, test whether § 315(e) bars it fromraising the obviousness challenges that the Board reviewed and rejected. At that point, the parties presumably would be adverse on the issue. [AVX Corporation v.Presidio Components, Inc., 2018-1106 (Fed. Cir. 5/13/2019).]
Author: Rick Neifeld, Neifeld IP Law, PC
5400 Shawnee Road, Suite 310
Alexandria, VA 22312-2300 USA
