By Jaime Choi and Dave Cochran

In instituting IPR of a particular patent, the PTAB found that the patent was not entitled to its priority claim, thus opening it up to invalidity attacks.  However, because the PTAB’s decision was not being challenged in the District Court of Northern Illinois, that Court held that it was not bound to the PTAB’s finding on priority.  Riddell, Inc. v. Kranos Corp., No. 4:16-cv-04496, slip op. at 9 (N.D. Ill. May 30, 2017).  Instead, the District Court refused summary judgment on the patent’s priority, and determined that the priority date would be decided by the jury if the case went to trial.

The asserted patent in Riddell, US 8,938,818, claims priority to a 2002 provisional application and is directed to a football helmet with an offset band including a pair of angled transition walls.  The defendant moved for partial summary judgment that the patent was not entitled to the provisional’s 2002 filing date because the provisional did not provide written description support for the angled transition walls – just as the PTAB had found when instituting Inter Partes Review of that patent in Kranos Corp. v. Riddell, Inc., No. IPR2016-01650 (P.T.A.B. Feb. 22, 2017).

The District Court found no support for the contention that substantial deference should be applied to the PTAB’s findings on the priority date.  First, although cases support the Federal Circuit deferring to the PTAB’s findings when reviewing a direct challenge of a decision by the PTAB, neither party in District Court was “appealing or directly challenging through some other statutory mechanism through the PTAB,” so the cases do not require the District Court to defer to the findings of the PTAB.  Furthermore, because it had the benefit of expert declarations impacting the determination of the priority date, the District Court considered that it was reviewing a more developed record than did the PTAB; such declarations also confirmed a genuine dispute as to the priority claim.  The District Court thus refused summary judgment on priority, despite the PTAB having found the priority claim to be invalid.

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For more than 25 years Dave has provided clients with a full range of patent legal services, including as lead counsel in more than 50 post-grant trials at the Patent Trial and Appeal Board of the United States Patent Office. Dave was part of the three-lawyer Jones Day team that prevailed at the Supreme Court in SAS Institute, Inc. v. Iancu, fundamentally changing PTAB litigation practice at the United States Patent Office.