Narrative Opinion Summary
In this patent infringement case, the Regents of the University of Minnesota sued LSI Corporation and Avago Technologies U.S. Inc. over U.S. Patent No. 5,859,601 related to error correction in data storage. LSI sought inter partes review from the Patent Trial and Appeal Board (PTAB), which found claim 13 unpatentable but upheld claims 14 and 17. The PTAB ruled that LSI's arguments concerning the anticipation of claims 14 and 17 by Okada’s Tables 8 and 9 were untimely and unpersuasive, and that Tsang’s patent did not qualify as prior art 'by another' under 35 U.S.C. § 102(e). The Federal Circuit affirmed these findings, emphasizing that state sovereign immunity does not apply in these proceedings. Procedurally, the case involved UMN's attempted dismissal based on immunity, which was denied, and subsequent appeals by LSI. The Board's conclusions, including the untimeliness of LSI's arguments and the rejection of Tsang as prior art, were upheld. Costs were awarded to UMN, and the case highlights issues of sovereign immunity, anticipation under 35 U.S.C. § 102, and the procedural requirements in patent litigation.
Legal Issues Addressed
Anticipation under 35 U.S.C. § 102subscribe to see similar legal issues
Application: The Board found that LSI failed to demonstrate that claims 14 and 17 were unpatentable under anticipation grounds, as Okada’s limitations did not satisfy the claim requirements.
Reasoning: The Board ruled that claim 13 was anticipated by Okada... However, it found that LSI failed to demonstrate that claims 14 and 17 were unpatentable under either ground.
Prior Art under 35 U.S.C. § 102(e)subscribe to see similar legal issues
Application: Tsang's patent did not qualify as prior art because it did not constitute work 'by another' as required under § 102(e).
Reasoning: Regarding Tsang, the Board concluded it did not qualify as prior art under § 102(e) since LSI's argument relied exclusively on disclosures from the Seagate Annual Report without establishing that Tsang was authored by another party.
Sovereign Immunity in Inter Partes Reviewsubscribe to see similar legal issues
Application: The Federal Circuit upheld the Board's decision that state sovereign immunity does not apply in inter partes review proceedings.
Reasoning: The Federal Circuit upheld the Board's decision regarding sovereign immunity, stating it does not apply in these proceedings.
Timeliness of Arguments in Patent Proceedingssubscribe to see similar legal issues
Application: LSI's argument concerning anticipation by Okada's Tables 8 and 9 was deemed untimely because it was raised for the first time at the hearing.
Reasoning: The Board ruled this argument untimely, as it was raised for the first time at the hearing, and found it unpersuasive because Tables 8 and 9 did not stand alone from Tables 1–7.
Waiver of Arguments Not Raised in Opening Briefsubscribe to see similar legal issues
Application: The court noted that arguments not presented in the opening brief are considered waived, effectively forfeiting LSI's challenge on the untimeliness determination.
Reasoning: LSI did not contest the Board's untimeliness determination in its appeal, effectively forfeiting the challenge. Citing precedent, the court noted that arguments not presented in the opening brief are considered waived.