CAFC Says Vidal Recusal as Petitioner’s Counsel Avoided Due Process Violation in IPR

On August 9, the U.S. Court of Appeals for the Federal Circuit issued a nonprecedential ruling in Unification Technologies LLC v. Micron Technologies Inc., affirming the Patent Trial and Appeal Board’s (PTAB) decisions invalidating claims of data management patents owned by Unification Technologies. 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 prior to recusing herself from the proceedings following her nomination as Director of the U.S. Patent and Trademark Office.

Vidal Took ‘Prudent Course of Action’ in Not Signing Petitioner Reply Briefs

In December 2020, petitions for inter partes review (IPR) proceedings were filed by Micron, Dell and HP, and each petition signed by Kathi Vidal as lead counsel. Those IPR petitions challenged claims from three patents owned by Unification Technologies: U.S. Patent No. 8533406, Apparatus, System, and Method for Identifying Data that is No Longer in Use; U.S. Patent No. 8762658, Systems and Methods for Persistent Deallocation; and U.S. Patent No. 9632727, Systems and Methods for Identifying Storage Resources that are Not in Use. Both the ‘406 and the ‘727 patents are continuations of the ‘658 patent, and each patent discloses a data storage apparatus that erases data following an indication that the data has been deleted from a file system.

In June 2022, about two months after Director Vidal was sworn in by the U.S. Senate, the PTAB denied Unification Technologies’ motion to dismiss the IPRs for Vidal’s conflict of interest. Vidal had continued to formally represent the petitioners following her October 2021 nomination, but she withdrew as lead counsel the following February. The PTAB’s IPR rulings noted that Vidal had recused herself from the proceedings, and requests for Director review filed by Unification Technologies were denied by USPTO Deputy Director Derrick Brent.

On appeal, Unification Technologies argued that Director Vidal’s recusal was insufficient to ensure impartial adjudication of the patent claims due to Vidal’s control over performance reviews and financial bonuses for administrative patent judges (APJs). Reviewing that argument de novo, the Federal Circuit found that Unification Technologies presented no evidence that Director Vidal ever exerted such control over a particular 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 [Director Vidal’s] 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 its obviousness findings on a single prior art reference, U.S. Patent No. 7055942 (“Suda”). The Federal Circuit had previously found that obviousness analyses by the PTAB do not need to include a motivation to combine if all limitations are disclosed by a single reference in Realtime Data v. Iancu (2019).

Suda discloses a memory management device permitting data to be erased in units of one block. Suda’s device includes a flash memory controlling section that performs rewriting processing in response to data erasures in a way that shortens the time needed to erase data.

On appeal, Unification Technologies argued that Suda’s erase command did not satisfy claim limitations from the ‘406 and ‘658 patents regarding indications of data erasures from a storage medium. According to the patent owner, such messages or indications must take place at the file system level to meet the limitations of 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. Finding that the patent owner disclaimed any claim construction issue at oral argument, the Federal Circuit held that Suda’s flash memory controlling section acted in response to an erase command and not a backend instruction as argued by the appellant. Further, the Federal Circuit agreed with the PTAB that the flash memory controlling section assigns logical and physical addresses and doesn’t merely store their relationships, meeting the indexer limitation.