Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in LSI Corp. v. Regents of the University of Minnesota, No. 21-2057 (Aug. 11, 2022), affirming the Patent Trial and Appeal Board’s findings in an IPR.
The Regents of the University of Minnesota (“UMN”) asserted infringement of U.S. Patent No. 5,859,601 (“the ’601 Patent”), which addressed minimizing error rates in recording data to computer storage devices, against LSI Corporation and Avago Technologies U.S., Inc. (together, “LSI”) in the District of Minnesota. The case was transferred to the Northern District of California under 28 U.S.C. § 1406(a). LSI petitioned the Patent Trial and Appeal Board (“PTAB”) for inter partes review (“IPR”) of the ’601 Patent. UMN disclaimed all but claims 13, 14, and 17, and the PTAB instituted review of those claims based on U.S. Patent No. 5,392,270 to Okada (“Okada”) and U.S. Patent No. 5,731,768 to Tsang (“Tsang”). The PTAB found that claim 13 of the ’601 Patent was unpatentable in view of Okada, and that claims 14 and 17 were patentable. The PTAB further concluded that Tsang was not prior art because it was not “by another” under 35 U.S.C. § 102(e). LSI appealed with respect to claims 14 and 17.
The Federal Circuit affirmed. First, the Court concluded the PTAB properly rejected LSI’s untimely arguments and noted that LSI waived any right to challenge the PTAB’s timeliness determination by failing to challenge it in its opening appeal brief. With respect to Tsang, the Court applied the three-step process set forth in Duncan Parking Techs, Inc. v. IPS Grp., Inc., 914 F.3d 1347 (Fed. Cir. 2019), for determining whether a reference is “by another”. The Court concluded that the portions of Tsang relevant to and relied on with respect to the challenged claims were not “by another.” Accordingly, the Court affirmed the PTAB’s determination that claims 14 and 17 were not unpatentable as anticipated by Okada or Tsang.