By Sachin Patel and Matt Johnson –

The PTAB exercised its discretion in Samsung Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01182, Paper 17 (Feb. 10, 2021) to deny inter partes review based on a district court finding the challenged claims indefinite.

On June 24, 2020, Samsung filed an IPR challenging claims 62-64, and 65 Acorn Semi LLC’s Patent No 7,084,423 (“the ’423 patent”) relating to a metal-semiconductor junction. The ’423 patent was being asserted in co-pending district court litigation Acorn Semi, LLC v. Samsung Electronics Co. Ltd., No. 2:19-cv-347 (E.D. Tex. 2019).

In the district court litigation, on October 16, 2020, the magistrate judge issued a claim construction order finding that a term of claim 62 was indefinite. All of the claims challenged in the Petition depend, directly or indirectly, from claim 62. On December 10, 2020,  District Judge Gilstrap issued an order adopting the magistrate’s claim construction recommendations in full, including the indefiniteness determination. As a result, under the District Court’s ruling, all of the claims challenged in the petition were indefinite.

After preliminary briefing, the PTAB inquired whether Samsung would accept a Fintiv stipulation that they “will not pursue in the [district court litigation] any invalidity ground on that patent that was raised or that could have been reasonably raised in an IPR.” Samsung agreed to this stipulation. Paper 15, at 1.  In the Fintiv stipulation, Samsung acknowledged that the proposed stipulation “may be moot” in view of the indefiniteness finding.  Id.  In response, Acorn Semi argued that “[t]he Board should not waste its valuable time on an IPR trial” where the claims have been held indefinite and recited past PTAB precedent declining to institute on claims found indefinite by a district court. Paper 16, at 4.

The PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. The District Court’s indefiniteness ruling could not simply be side-stepped by the PTAB. “We do not agree that Petitioner may properly approach this issue by simply asserting that, for this proceeding, whatever this phrase means, it is shown in the prior art.” Samsung did not argue that the District Court’s determination was incorrect or offer an alternative conclusion. In addition, Samsung did not argue how to reconcile the indefiniteness ruling with the unpatentability arguments involving the same term. Paper 17, at 7. Samsung “has not set forth any explanation of how we could address the limitation at issue consistently with the indefiniteness arguments Petitioner successfully advanced in the litigation.” As a result, institution “would not be in the interests of justice or efficiency.”

Takeaway: Consistent with similar PTAB decisions, an indefiniteness ruling from co-pending district court litigation could weigh toward a discretionary denial under 35 U.S.C. § 314(a).

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's nearly 400 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.