Last week, the Federal Circuit issued an opinion in Polaris Innovations Ltd. v. Brent, No. 2019-1483 (Sept. 15, 2022), affirming the PTAB’s refusal to terminate two IPR proceedings.
In 2017, during an ongoing litigation, NVIDIA Corp. (“NVIDIA”) filed IPRs challenging the claims of U.S. Patent Nos. 6,532,505 and 7,405,993, owned by Polaris Innovations Ltd. (“Polaris”). The PTAB issued Final Written Decisions (“FWDs”) in both IPRs in 2018, holding all challenged claims unpatentable. Polaris appealed, but the underlying litigation settled before the IPR appeals were decided; thus, NVIDIA withdrew from the appeals, and the PTAB intervened to defend its IPR decisions. Prior to oral argument, the Federal Circuit vacated the IPR FWDs and remanded for further consideration on the constitutionality of PTAB judges in view of Arthrex Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). On remand, Polaris and NVIDIA filed motions to terminate the IPR proceedings in view of the litigation settlement. Those motions were pending when the Supreme Court vacated the Federal Circuit’s Arthrex decision, which resulted in the reinstatement of the IPR FWDs and reinstatement of the pending appeal of those decisions. The Federal Circuit remanded again for proceedings consistent with the Supreme Court’s Arthrex decision, and the PTAB denied the pending motions to terminate. Polaris then filed an amended notice of appeal challenging the PTAB’s termination decision.
The Federal Circuit affirmed. It reviewed the termination motions by analyzing 35 U.S.C. § 317, which governs settlement of IPRs, and explained that the statute provides no mandatory right to terminate IPR proceedings. Instead, the statute provides only a mandatory right to terminate with respect to a petitioner. The Court explained that “the statute gives the [PTAB] discretion to carry on to a final written decision—even without any petitioner,” and it held that the PTAB did not abuse its discretion in denying the termination motions. Separately, the Court concluded the termination motions were untimely because the PTAB had “decided the merits” in the FWDs before the termination motions were filed. Though the FWDs were vacated when the termination motions were filed, they had been reinstated by the time the PTAB ruled on the motions. On the merits, the Court analyzed the claim constructions used by the PTAB during the IPRs and found them to be supported. Thus, the Court affirmed the PTAB’s determination that all challenged claims were unpatentable.