ACOUSTIC TECHNOLOGY INC. v. ITRON NETWORKED SOLUTIONS INC.

ACOUSTIC TECHNOLOGY INC. v. ITRON NETWORKED SOLUTIONS INC., Appeal No. 2019-1061 (Fed. Cir. Feb. 13, 2020).  Before Reyna, Moore, and Taranto.  Appealed from the Patent Trial and Appeal Board.  (IPR Institution)

Background

Acoustic sued Itron in March 2010 for infringement of its patent.  Itron eventually licensed the patent from Acoustic to settle the lawsuit.  Acoustic then sued Silver Spring Networks for infringement in March 2016.  In response, Silver Spring filed an IPR challenging the validity of Acoustic’s patent in March 2017.

Before filing the petition, Itron and Silver Spring were in merger discussions.  The parties eventually agreed to merge nine days after the IPR was instituted.

The PTAB issued a final written decision seven months after the merger was completed, and cancelled the only claim at issue.

Acoustic appealed the decision to the Federal Circuit.  Although not raised before the PTAB, Acoustic argued that the IPR was time-barred under §315(b), because Itron had merged with Silver Spring.

Issue/Holding

Did the PTAB exceed its jurisdiction in cancelling the claim at issue?  (continue reading)

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Summary byArun Shome