Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd.

• Citation: 120 U.S.P.Q.2d 1324,838 F.3d 1236
• Decision Date: 23 September 2016
• Docket Number: 2015–1726,2015–1727
• Parties: Husky Injection Molding Systems Ltd., Appellant v. Athena Automation Ltd., Cross–Appellant
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

838 F.3d 1236

120 U.S.P.Q.2d 1324

Husky Injection Molding Systems Ltd., Appellant

v.Athena Automation Ltd., Cross–Appellant

2015–1726

2015–1727

United States Court of Appeals, Federal Circuit.

Decided: September 23, 2016

Matthew L. Cutler , Harness, Dickey & Pierce, PLC, St. Louis, MO, argued for appellant.

Marshall John Schmitt , Michael Best & Friedrich, LLP, Chicago, IL, argued for cross-appellant. Also represented by Gilberto Eduardo Espinoza, Martin L. Stern .

Joseph Matal , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee. Also represented by Nathan K. Kelley, Scott Weidenfeller .

Before Lourie, Plager, and Stoll, Circuit Judges.

Opinion concurring in part and dissenting in part filed by Circuit Judge Plager.

Lourie, Circuit Judge.

Husky Injection Molding Systems Ltd. (“Husky”) appeals from the U.S. Patent and Trademark Office Patent Trial and Appeal Board's (“the Board”) inter partes review decision finding claims 1, 4–16, 18, and 20–22 of U.S. Patent 7,670,536 (“the '536 patent”) anticipated. Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd. , No. 201300290, 2014 WL 5454543, at *23 (P.T.A.B. Oct. 23, 2014) (“Final Written Decision ”). Athena Automation Ltd. (“Athena”) cross-appeals from the Board's decision finding claims 2, 3, 17, and 19 of the '536 patent not anticipated. Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd. , No. 2013–00290 (P.T.A.B. Feb. 23, 2015) (decision on rehearing); see Joint App. (“J.A.”) 56–65. For the reasons that follow, we dismiss Husky's appeal for lack of jurisdiction; we vacate the Board's decision on incorporation by reference and its finding of no anticipation with respect to claims 2, 3, 17, and 19; and we remand for further consideration of those latter claims.

BACKGROUND

The '536 patent discloses a molding machine having a clamp assembly comprising, inter alia , a stationary platen 120, a movable platen 122, tie bars 121, tie bar locks 130 that couple the tie bars to the movable platen, and clamp actuators 128 that supply a clamping force to the tie bars. '536 patent col. 8 l. 58–col. 9 l. 46. Figure 2a, reproduced below, depicts the clamp assembly.

Id. fig.2a. When the two platens, each attached to a mold support structure, 124, 126, are brought together, a mold cavity is created “in which a molded article may be molded ... once the extruder 104 injects, under pressure, the injectable molding material into the mold cavity.” Id. col. 9 ll. 6–10; id. col. 9 ll. 20–24.

The claims of the '536 patent specifically recite a lock and a method for using that lock to couple the tie bars 121 to the movable platen 122.¹ Id. col. 9 ll. 29–31.

The lock has two interlocking components, one associated with the tie bar (lock member 510) and one with the platen (complementary lock member 512). Id. col. 11 ll. 55–58; id . col. 11 l. 67–col. 12 l. 3. The complementary lock member 512 comprises a sleeve 230 rotatably mounted to a bore (hole) in the corner of the movable platen, which receives tie rod 121 and its lock member 510. Id. col. 12 ll. 6–21. The two lock members engage, and the teeth of each lock member align, when sleeve 230 is rotated. Id. As shown below, Figure 5b reflects the unlockable condition, and Figure 6b reflects the lockable condition.

Id. fig.5b, fig.6b. Once the two lock members engage, the clamp on the stationary platen applies a clamping force, locking the two platens together and assembling the mold. Id. col. 13 ll. 12–21.

Husky's former owner and president (“Schad”) is also a co-inventor of the '536 patent. In 2007, Schad assigned the '536 patent to Husky. Shortly thereafter, Schad sold Husky to a private equity group, and left to form Athena. In 2012, Athena filed a petition for inter partes review at the Board, challenging the patentability of all 22 claims in the '536 patent. Athena asserted, inter alia , that various claims of the '536 patent were anticipated either by U.S. Patent Application 2004/0208950 (“Glaesener”) in combination with its incorporation by reference of U.S. Patent 5,753,153 (“Choi”) (together, “Glaesener/Choi”), or by U.S. Patent 5,417,913 (“Arend”).

Husky filed a preliminary response, arguing only that assignor estoppel barred Athena from filing a petition for review. The Board rejected that argument and instituted review. Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd. , No. 201300290, 2013 WL 8595976, at *2, *7 (P.T.A.B. Oct. 25, 2013) (“Institution Decision ”). It first reasoned that the equitable doctrine, “a defense to certain claims of patent infringement,” id. at *7 (quoting Semiconductor Energy Lab. Co. v. Nagata , 706 F.3d 1365, 1369 (Fed. Cir. 2013) ), does not provide for an exception to the otherwise broad statutory mandate that “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent,” 35 U.S.C. § 311. The Board further found a comparison to 17 U.S.C. § 1337(c) instructive, in that Congress provided for “all legal and equitable defenses” in an ITC investigation, but not in inter partes review. Institution Decision at *7.

In 2014, the Board issued its final written decision. It found that claims 1, 4–16, 18, and 20–22 were anticipated by Arend, Final Written Decision at *23, and that claims 2, 3, 17, and 19 were not anticipated by Glaesener/Choi, id. at *16–17. With respect to the latter, the Board declined to address whether two paragraphs in Glaesener incorporate Choi by reference,² instead finding that even assuming sufficient incorporation, the reference combination still fails to teach the recited limitations “in the same form and order as listed in the claims.” Id. at *16. Notably, the Board found that Athena failed to explain what Glaesener incorporates from Choi, much less how Choi's clamping device would secure the components of Glaesener's molding machine. Id. at *17.

Athena requested rehearing of the final decision, and the Board granted the request in part. J.A. 64. In doing so, the Board expressly addressed incorporation by reference, and found that Athena failed to show that Glaesener incorporates any portion of Choi for purposes of anticipation. Specifically, it reasoned that Athena submitted no evidence or explanation supporting what a skilled artisan would understand the “pineapple and toothed-ring mechanism” in Choi to be, J.A. 60, nor were Choi and Glaesener clear as to what was meant to be incorporated, J.A. 62. For that reason only, the Board reaffirmed its finding that Athena failed to prove anticipation of claims 2, 3, 17, and 19. J.A. 63–64.

Husky timely appealed from the Board's decision with respect to claims 1, 4–16, 18, and 20–22; Athena timely cross-appealed from the Board's decision with respect to claims 2, 3, 17, and 19. We have jurisdiction to review the Board's final decision under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

I. HUSKY'S APPEAL

Husky's appeal focuses exclusively on whether assignor estoppel may bar a party from filing a petition for inter partes review at the Patent and Trademark Office. Husky contends that Athena is in privity with Schad, the assignor of the '536 patent, and, as such, is estopped from challenging the claims of the '536 patent. Accordingly, Husky continues, the Board acted outside of its statutory authority when it instituted review and found claims 1, 4–16, 18, and 20–22 unpatentable as anticipated. As Husky only argues that Athena is estopped from seeking inter partes review, and not that the claims are not anticipated on the merits, we consider only the estoppel question. For the reasons that follow, we dismiss Husky's appeal for lack of jurisdiction.

A

We begin with necessary context. In 2011, Congress created the inter partes review process, inter alia , as a means for the Patent and Trademark Office to efficiently review issued patents. Sections 311 through 319 carefully describe the requirements of and mechanism for review. See 35 U.S.C. §§ 311 –319. Of particular importance is § 314(d), which provides that “the determination by the Director whether to institute inter partes review under this section shall be final and nonappealable .” Id. § 314(d) (emphasis added). Since § 314(d)'s inception, we have had several opportunities to address whether and to what extent it limits our ability to review the institution decision. E.g. , Achates Reference Publ'g, Inc. v. Apple Inc. , 803 F.3d 652, 657–58 (Fed. Cir. 2015) ; In re Cuozzo Speed Techs., LLC , 793 F.3d 1268, 1273 (Fed. Cir. 2015), aff'd , Cuozzo Speed Techs., LLC v. Lee , –––U.S. ––––, 136 S.Ct. 2131, 195 L.Ed.2d 423 (2016) ; In re Procter & Gamble Co. , 749 F.3d 1376, 1378 (Fed. Cir. 2014) ; In re Dominion Dealer Sols., LLC , 749 F.3d 1379, 1381 (Fed. Cir. 2014) ; St. Jude Med., Cardiology Div., Inc. v. Volcano Corp. , 749 F.3d 1373, 1375 (Fed. Cir. 2014).

We first held in St. Jude that § 314(d) bars interlocutory review of a decision to deny inter partes review. 749 F.3d at 1375. In doing so, we characterized § 314(d) as a “broadly worded bar on appeal,” and reasoned that such a result comports with 35 U.S.C. §§ 141(c) and 319, which only authorize appeals from a final written decision. Id. at 1375–76 ; see 35 U.S.C. § 141(c) (“A party to an inter partes review ... who is dissatisfied with the final written decision of the [Board] may appeal the Board's decision....”); id. § 319 (“A party dissatisfied with the final written decision of the [Board] may appeal the decision....”).

We then held in Cuozzo that § 314(d) precludes review of the Director's earlier decision to institute, even after a final written decision. In Cuozzo, the Director instituted an inter partes review of certain claims, relying on several references not cited in the petition with respect to those claims. See 793 F.3d at 1272 (“Although Garmin's petition with respect to claim 17 included the grounds on which the PTO instituted review, the petition did not list Evans and...