CAFC: Petitioner’s counsel avoided a violation of due process by requesting a vidal recusal.
The Federal Circuit found substantial evidence supporting obviousness based on a single prior art reference, and held that there was no due process issue arising from Kathi Vidal’s actions as lead counsel for petitioner before she recused herself from the proceedings following her nomination as Director of the U.S. Patent and Trademark Office. The Federal Circuit found that Kathi Vidal had acted in a prudent manner by not signing the reply briefs of petitioners. These IPR petitions challenged the claims of three patents owned and held by Unification Technologies. U.S. Patent No. These IPR petitions challenged claims from three patents owned by Unification Technologies: U.S. System and Methods for Persistent Delocation. U.S. Patent Number. The 9632727 patent is Systems and Methods to Identify Storage Resources That Are Not In Use. The PTAB rejected Unification Technologies’ request to dismiss IPRs due to Vidal’s conflict. This was about two months after Vidal had been sworn in as Director by the U.S. Senate. Vidal continued to represent the petitioners after her nomination in October 2021, but she resigned as lead counsel in February of the following year. Unification Technologies argued on appeal that Director Vidal’s recusal wasn’t enough to ensure impartial adjudication due to Vidal’s control over performance evaluations and financial bonuses for administrative Patent Judges (APJs). The Federal Circuit, in re-examining that argument de novo found that Unification Technologies had not presented any evidence that Director Vidal had ever exercised such control over an APJ. The Federal Circuit cited its 2021 decision in Mobility Workx v. Unified Patents to note that it was speculative at best to suggest that an APJ would receive a more favorable bonus for ruling a certain way in IPR proceedings.
In footnotes, the Federal Circuit also pointed out that Unification Technologies had abandoned its argument that Director Vidal’s recusal was belated in a way that influenced the IPR rulings. Unification Technologies specified at oral argument that “the prudent course of action would be to not continue to put [T] name on new filings.” The Federal Circuit noted that Vidal’s name was omitted from petitioner reply briefs filed in the IPRs, and added in a separate footnote that the IPRs were instituted based on a reasonable likelihood of unpatentability established before Vidal’s nomination.
Suda’s Flash Memory Controlling Section Satisfies All Limitations of Challenged Claims
Unification Technologies also appealed the PTAB’s obviousness ruling, arguing that the Board failed to articulate either a motivation to modify the asserted prior art reference or a reasonable expectation of success in doing so. The PTAB based their obviousness findings on a single reference, U.S. Patent No. 7055942 (“Suda”). The device disclosed by Suda allows data to be erased by block. Suda’s device has a flash memory control section that performs rewriting in response to data erases in a manner that reduces the time required to erase data. According to the patent owner such messages or indicators must occur at the file system levels to meet the limitations in the challenged claims. However, the appellate court found that testimony from the expert witness for the petitioners provided substantial evidence that a skilled artisan would understand Suda’s erase command to indicate data deletion at the file system level.
Unification Technologies also lost on its arguments that Suda did not disclose marking module and indexer limitations in the challenged claims. The Federal Circuit found that the patent owner had disclaimed any claim-construction issue at oral arguments, and held that Suda’s flash memory controlling sections acted in response an erase command rather than a backend instructions as argued by appellant. The Federal Circuit also agreed with the PTAB, that the flash memory control section assigns logical addresses and does not merely store relationships between them, thus meeting the indexer requirement.
Steve Brachmann graduated from the University at Buffalo School of Law in May 2022, earning his Juris Doctor. He served as the president of the Intellectual
