Volkswagen beats Fintiv factors, gets review of semiconductor patent
2022 IPDBRF 0019
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By Patrick H.J. Hughes
WESTLAW Intellectual Property Daily Briefing
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February 18, 2022
(February 18, 2022) - A semiconductor patent must face invalidity claims in an inter partes review proceeding because Volkswagen persuaded the Patent Trial and Appeal Board not to defer to a current International Trade Commission dispute involving the same patent.
Volkswagen Group of America Inc. v. Arigna Technology Ltd., No. IPR2021-01321, (P.T.A.B. Feb. 15, 2022).
The PTAB on Feb. 15 rejected patent owner Arigna Technology Ltd.'s request to deny institution of the IPR under Section 314(a) of the Patent Act, 35 U.S.C.A. § 314(a), which permits such denials for cases in which parallel proceedings are significantly underway.
The board decided in NHK Spring Co. v. Intri-Plex Technologies Inc., No. IPR2018-00752, (P.T.A.B. Sept. 12, 2018), that, for cases involving the same patent, it would defer to court proceedings that are in an "advanced state."
It later defined that state in Apple Inc. v. Fintiv Inc., No. IPR2020-00019, (P.T.A.B. Mar. 20, 2020), with a nonexclusive list of factors for panels to weigh when considering deferrals.
After consideration of the Fintiv factors, the PTAB agreed to grant Volkswagen Group of America Inc.'s petition and hear its anticipation and obviousness arguments.

Disagree at the ITC

Irish tech licensor Arigna is the exclusive assignee of U.S. Patent No. 8,247,867, a multilayered semiconductor device Mitsubishi Electric Corp. had previously owned.
In February 2021, Arigna filed a lawsuit in the U.S. District Court for the Eastern District of Texas, accusing a long list of car companies, including BMW, Daimler, Nissan, Tesla, Toyota and Volkswagen, of infringing a patent for a radar device.
It amended the complaint in March to include the '867 patent. It specifically names Volkswagen as liable for designing and selling vehicles that incorporate semiconductor devices that infringe the '867 patent.
Arigna also filed a complaint with the ITC in May under Section 337 of the Tariff Act of 1930, 19 U.S.C.A. § 1337, which bans infringing imports.
In June the ITC ordered an investigation into the infringement and illegal importation allegations. In re Certain Power Inverters & Converters, Vehicles Containing the Same, No. 337-TA-1267, (Int'l Trade Comm'n June 23, 2021).
J.P. Long, Elliot Cook and Alex Boyer of Finnegan, Henderson, Farabow, Garrett & Dunner LLP filed an IPR petition on Volkswagen's behalf in July.
Michael Heim and Christopher Limbacher of Heim Pain & Chorush LLP represented Arigna.

Significant investment?

Arigna urged the board to deny the carmaker's petition, arguing that there has been "significant investment" in the ITC dispute, given that the parties had already submitted important briefs.
Considering that Volkswagen filed its IPR petition almost immediately after the ITC action began, the PTAB could not fault the car company and found this factor to be neutral.
The issue that was most influential was Volkswagen's argument that the IPR would evaluate more aspects of the '867 patent than the ITC would consider, as the ITC is designed to bar imports, not invalidate patents. Because the issues at the agencies are not identical, the PTAB said this favored initiating the IPR.
Arigna also objected to the IPR on the ground that the petition contained "voluminous filings" and a "lack of particularity," but the PTAB rejected this argument.
The board pointed out that the petition was within the 14,000 word-count limit and the complexity of the subject matter demanded a large number of supporting exhibits.
Finding a reasonable likelihood that Volkswagen will prevail in at least one of its invalidation arguments, the PTAB agreed to institute the IPR.
By Patrick H.J. Hughes
End of Document© 2024 Thomson Reuters. No claim to original U.S. Government Works.