Following invalidation of independent claim 1 (and a number of other claims) of the sole asserted patent in an inter partes review, Lenovo moved for summary judgment of invalidity of the sole asserted claim of the patent. Lenovo asserted both collateral estoppel and that there was no genuine issue of fact that the claim was obvious. Judge Saris ruled that estoppel applied and granted Lenovo’s motion. The asserted patent related to symmetric multiprocessor or shared-memory multiprocessor systems. Claim 1, which was invalidated by the PTAB, recited the system in some detail; claim 11, the sole asserted claim, added that the system further comprised the microprocessors and the memory device of the system, without further limitation. Notably, claim 11 was not challenged during the IPR. Lenovo asserted that collateral estoppel should apply because Intellectual Ventures could not show that the additional limitations of claim 11 “materially alter the question of invalidity.” Noting that the Federal Circuit had determined that issue preclusion applies to an invalidity finding before the PTAB despite the different standards of proof and of claim construction between the PTAB and district court, Judge Saris determined that estoppel applies. She indicated that the claims need not be identical for estoppel to apply, merely that the issues be the same. As claim 1 had been fully adjudicated, the sole question was whether the differences between claim 1 and claim 11 alter the infringement analysis in a meaningful way – Judge Saris determined that it did not. Claim 1 included limitations on the interfaces between microprocessors and memory devices. Claim 11 merely affirmatively claimed the microprocessors and memory devices. The PTAB had determined that the prior art reference relied upon disclosed microprocessors and memory devices, meaning that the claim did not add anything to the invalidity analysis that had not been determined before the PTAB.
Judge Casper partially granted Neotech’s motion to stay the litigation pending inter partes review. This case, which concerns allegations of infringement of a patent relating to aspiration devices, was filed in California in May 2017. Following the issuance of the TC Heartland decision, Neotech filed a complaint in Delaware, where it believed Sandbox to have been incorporated, and dismissed the California complaint. Upon being informed that Sandbox was, in fact, incorporated in Massachusetts, Neotech amended its Delaware complaint to remove the jurisdictional allegations and moved to transfer the case to Massachusetts, while Sandbox moved to dismiss the case for lack of personal jurisdiction and improper venue, seeking to have the second Delaware complaint deemed a second voluntary dismissal and asking the Court to dismiss the complaint with prejudice pursuant to FRCP 41(a)(1)(B). The Delaware court transferred the case to Massachusetts and left the decision on Sandbox’s motion to dismiss to the Massachusetts court. Sandbox then requested inter partes review of the patent in suit, and Neotech moved to stay the litigation pending the outcome of the IPR. Judge Casper stayed the case in its entirety until the first of May 30, 2019 or the PTAB’s decision on whether to institute the IPR, and indicated that she would accept requests to continue to stay the case if the IPR should proceed. She further denied Sandbox’s motion to dismiss without prejudice, indicating that Sandbox would be free to renew the motion once the stay was removed.
Following construction of the claims, Judge Capser denied Philips’ motion for summary judgment of validity. WAC had sought inter partes review on several grounds, some of which were denied. Judge Casper, citing to Shaw Industries Group v. Automated Creel Systems, found that the Federal Circuit had determined that the estoppel resulting from an unsuccessful IPR did not apply to grounds that were not instituted by the PTO. Judge Casper denied WAC’s motion to compel the deposition of the named inventor of one of the patents-in-suit for lack of relevance. WAC had asserted that the inventor’s testimony was relevant on patent practices at the time the application was filed, prior art, the problem the patent allegedly solves, the underlying development of the technology claimed in the patent, the alleged contribution of each inventor to the patent, and the facts and circumstances surrounding the alleged invention. The problem was that none of these issues related to any claims or defenses of WAC, thus making these issues irrelevant. The court specifically noted, however, that the inventor was no longer an employee and was a resident of France, suggesting that the relevancy might have been sufficient had the witness been more readily available, but did not outweigh the inconvenience of making the witness appear.