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PTAB Final Written Decisions
On May 25, 2017, the Patent Trial and Appeal Board (PTAB) issued Final Written Decisions on:
U.S. Patent No. 6,377,577 (“’577 Patent”)
U.S. Patent No. 7,023,853 (“’853 Patent”)
On June 1, 2017, PTAB issued a Final Written Decision on:
U.S. Patent No. 7,224,668 (“’668 Patent”)
PTAB findings:
The ’577 Patent – Invalid
The ’668 Patent – Invalid
The ’853 Patent – Valid
Background of the Dispute
The Inter Partes Review (IPR) proceedings were initiated by Arista Networks.
The IPRs were filed in response to infringement allegations brought by Cisco.
Cisco had filed actions in multiple venues, including the U.S. International Trade Commission (ITC).
Prior to the PTAB decisions, the ITC:
Upheld the validity of the ’577 and ’668 Patents.
Determined that Arista infringed those patents.
Issued exclusion and cease-and-desist orders.
Post-PTAB Actions
Arista filed a petition requesting that the ITC:
Suspend its limited exclusion order regarding the ’577 Patent.
Likely to file a similar request regarding the ’668 Patent.
Cisco plans to:
Appeal the PTAB’s decisions to the Federal Circuit.
The conflicting PTAB and ITC outcomes create uncertainty for patent owners.
The case demonstrates that:
Even though the ITC does not stay investigations due to IPRs,
IPR decisions may still significantly impact ITC proceedings.
ITC Investigation Details (Investigation No. 337-TA-945)
Cisco initiated the ITC investigation on December 18, 2014.
Cisco alleged infringement of six patents, including:
’577 Patent
’853 Patent
’668 Patent
On May 5, 2017, the ITC:
Issued a limited exclusion order.
Barred unlicensed entry of Arista network devices infringing the ’577 and ’668 Patents.
ITC findings:
’577 and ’668 Patents – Valid and infringed.
’853 Patent – Not infringed.
The ITC declined to find the ’577 and ’853 Patents invalid due to assignor estoppel.
Assignor Estoppel
Assignor estoppel is an equitable doctrine that:
Prevents a patent assignor from later claiming the patent is invalid.
Many Arista employees previously worked at Cisco.
The ITC ruled that Arista could not challenge validity of the ’577 and ’853 Patents.
However, the ITC noted:
Without assignor estoppel, the ’577 Patent would have been anticipated by the Feldmeier reference.
The ’668 Patent was not invalid in view of the JUNOS Guide, Amara, or their combinations.
Arista did not seek a stay of the ITC investigation based on the IPRs.
IPR Proceedings
Arista filed IPR petitions on December 9, 2015.
The IPRs were instituted in June 2016.
PTAB ruled that:
Assignor estoppel does not apply in IPR proceedings.
PTAB invalidated:
’577 Patent as obvious over Huey + ATM UNI Specification.
’668 Patent using different prior art than presented at the ITC.
PTAB’s reasoning differed significantly from the ITC’s approach.
Deadlines and Appeals
ITC exclusion orders:
Presidential Review Period ends July 4, 2017.
Orders go into effect on that date.
IPR appeals:
Must be filed within 63 days of the Final Written Decision (or rehearing decision).
Cisco is expected to appeal the PTAB decisions after July 4, 2017.
Key Takeaways
The case highlights inconsistencies between:
ITC decisions
PTAB decisions
Demonstrates systemic uncertainty in U.S. patent enforcement.
Open questions remain:
Will the ITC rescind its exclusion orders?
Will exclusion orders remain in effect during the Federal Circuit appeal?
Will Cisco benefit from temporary exclusion despite PTAB invalidation?