On June 6, Judge Albright granted Meta Platforms. Inc.’s (Meta) 12(b)(6) motion to dismiss a complaint filed by Grecia Estate Holdings LLC in part relying on Grecia’s representations in IPR2016-00789 (IPR) to the PTAB that successfully defeated institution of the IPR.
The complaint alleged infringement of claim 16 of U.S.P. 8,402,555 (‘555). Claim 16 reads:
16. The computer program product of claim 15, wherein the membership verification token comprises at least one token selected from a group consisting of a purchase permission, a rental permission, or membership permission coupled to a royalty scheme;
wherein the permission is represented by one or more of a letter, number, combination of letters and numbers phrase, authorization, list, interface button or an instrument of trade for access rights of the encrypted digital media.
Claim 15 required that the “membership verification token provided by a first user, corresponding to the encrypted digital media” which is also a limitation of claim 16. Grecia in its complaint asserted that Facebook user’s “PayPal account or Debit and Credit Card number” was the “membership verification token.” However, in the IPR Grecia asserted in its POPR that credit card information could not be the token because a credit number corresponds to the credit card account and not digital media. In the IPR the assertion carried the day for Grecia and institution of the IPR was denied. As a result, the court found that Grecia’s allegations in the complaint contradict its prior statements in the IPR as to the scope of the claim. The court found that Grecia failed to “articulate why it is plausible that the accused product infringes the patent claim.” The court concluded Grecia cannot plausibly allege infringement on this ground.
The key point is that representations made in an IPR as to claim scope can provide a basis for a dismissal on the pleadings. The IPR was treated by the court as part of the prosecution history of the patent citing Aylus Networks, Inc. v. Apple, Inc., 856 F.3d 1353, 1362 n.3 (Fed. Cir. 2017). As such in an IPR one must be careful in arguing for patentability not to create a history which makes pleading infringement difficult or impossible.