946 F.3d 1348
Fed. Cir.2020Background
- Personal Audio sued CBS for infringing U.S. Patent No. 8,112,504 (claims 31–35), and a jury found infringement and rejected invalidity for claims 31–34, awarding damages.
- A third party (EFF) filed an inter partes review (IPR) of claims 31–35; the PTAB issued a final written decision holding claims 31–35 unpatentable.
- Personal Audio appealed the PTAB decision to the Federal Circuit; this court affirmed the PTAB. The Supreme Court denied certiorari.
- The district court stayed entry of judgment pending direct review of the PTAB decision; after affirmance, the parties agreed current precedent required judgment for CBS, and the district court entered judgment for CBS.
- Personal Audio appealed the district-court judgment, challenging (a) the lawfulness of the PTAB final written decision and (b) the district court’s conclusion that the affirmed PTAB decision required termination of the district-court case in CBS’s favor.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court could adjudicate challenges to the PTAB final written decision | Personal Audio argued the district court could hear constitutional and other challenges (e.g., Seventh Amendment) to the PTAB decision in the pending infringement case | CBS argued review of the PTAB final written decision is exclusively by direct appeal to the Federal Circuit under the statutory IPR scheme | Held: District court lacked jurisdiction to hear collateral attacks on the PTAB final written decision; Congress provided an exclusive direct-review route to the Federal Circuit (appeal is exclusive) |
| Whether the district court was required to enter judgment for CBS after the PTAB unpatentability ruling was affirmed | Personal Audio argued the affirmed PTAB decision should not automatically terminate the district-court case (invoking Seventh Amendment and other objections) | CBS argued existing Federal Circuit precedent requires termination of the district-court action and entry of judgment for the defendant when the PTAB’s invalidation is affirmed | Held: Personal Audio conceded current precedent was controlling and forfeited any contrary argument; district court correctly entered judgment for CBS; judgment affirmed |
| Whether additional constitutional claims (Ex Post Facto, Takings, Due Process, Appointments Clause) were preserved | Personal Audio later asserted these constitutional challenges to the PTAB decision | CBS relied on forfeiture and the exclusive-review rule | Held: These claims were forfeited for failure to raise below or in opening brief; in any event review is subject to the same exclusive-jurisdiction bar (Appointments Clause challenge also forfeited) |
Key Cases Cited
- Hertz Corp. v. Friend, 559 U.S. 77 (court must independently assess subject-matter jurisdiction)
- Elgin v. Dep’t of Treasury, 567 U.S. 1 (statutory scheme can preclude district-court review where Congress created exclusive review channel)
- Thunder Basin Coal Co. v. Reich, 510 U.S. 200 (test for whether statute precludes district-court jurisdiction over administrative claims)
- Block v. Community Nutrition Inst., 467 U.S. 340 (framework for determining exclusivity of review in agency contexts)
- Sheldon v. Sill, 49 U.S. 441 (Congress may define jurisdiction of inferior courts)
- Keene v. United States, 508 U.S. 200 (Congressional power to define jurisdictional limits)
- Bowen v. Michigan Acad. of Family Physicians, 476 U.S. 667 (presumption of judicial review of administrative action)
- Personal Audio, LLC v. Electronic Frontier Foundation, 867 F.3d 1246 (Federal Circuit decision affirming PTAB in related IPR appeal)
- XY, LLC v. Trans Ova Genetics, 890 F.3d 1282 (district-court action must terminate where PTAB unpatentability ruling is affirmed)
- Dow Chem. Co. v. Nova Chems. (Canada), 803 F.3d 620 (same)
- ePlus, Inc. v. Lawson Software, 789 F.3d 1349 (same)
- Fresenius USA, Inc. v. Baxter Int’l, 721 F.3d 1330 (same)
- Customedia Techs., LLC v. Dish Network Corp., 941 F.3d 1173 (forfeiture of Appointments Clause challenge when not raised timely)