We see no reason to disturb the Board's crediting of this testimony. See ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378, 1384 (Fed. Cir. 2020) ("We find no error in the Board's decision to credit the opinion of one expert over another, and we do not reweigh evidence on appeal.").
ESIP appealed the Board's decision to this court. On appeal, this court affirmed the Board's obviousness determination. ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020). Citing Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S.Ct. 1367 (2020), this court further held that it was barred from reviewing the Board's § 312(a)(2) determination because of 35 U.S.C. § 314(d), which makes the determination to institute review "final and nonappealable."
We are precluded from reviewing this challenge. In ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378, 1386 (Fed. Cir. 2020), we concluded that "the Board's § 312(a)(2) real-party-in-interest determination is final and non-appealable" under 35 U.S.C. § 314(d) because it "raises an ordinary dispute about the application of an institution-related statute." Id.
That is, a challenge "that the Board failed to comply with [the RPI requirement of] § 312(a)(2)" and should have terminated the proceeding is merely " ‘a contention that the agency should have refused to institute an inter partes review,’ " and therefore not reviewable by this court in view of § 314(d). ESIP Series 2, LLC v. Puzhen Life USA, LLC , 958 F.3d 1378, 1386 (Fed. Cir. 2020) (quoting Thryv , 140 S. Ct. at 1373–74 ). Additionally, we determined, in Facebook, Inc. v. Windy City Innovations, LLC , that judicial review is not precluded by § 314(d) for challenges to "whether the Board's joinder decisions exceeded the statutory authority provided by § 315(c)," because this challenge was not related to the institution decision but rather concerned "whether the PTO had exceeded its statutory authority as to the manner in which the already-instituted IPR proceeded."
Our court has recently considered Thryv ’s application to the petition requirement in 35 U.S.C. § 312(a)(2), which requires a petitioner to identify "all real parties in interest." ESIP Series 2, LLC v. Puzhen Life USA, LLC , 958 F.3d 1378, 1385–86 (Fed. Cir. 2020). We explained that, for purposes of applying the "No Appeal" provision in § 314(d), a challenge based on a petitioner's failure to identify all "real parties in interest" was no different than the challenge to § 315(b) ’s time bar in Thryv . Id. at 1386.
Thereafter, in view of Click-To-Call, this court held that preclusion of judicial review under § 314(d) "extend[s] to a Board decision concerning the 'real parties in interest' requirement of § 312(a)(2)." ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378, 1386 (Fed. Cir. 2020). Accordingly, we hold that § 314(d) precludes our review of the Board's decision that Bank of America is not a real party in interest.
Appellant Fall Line Patents, LLC ("Fall Line") asks us to ignore the constraints of our precedent with respect to two separate issues. It maintains that we have mandamus jurisdiction over the Patent Trial and Appeal Board's ("the Board") real party-in-interest determinations, notwithstanding our recent holding in ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020) that § 314(d) precludes appellate review over this institution-based requirement. See Appellant Supp. Br. 1-4.
The inclusion of hypothetically justified claims under the '130 patent does not save this case from being found exceptional.See Dkt. 78-1 at 29 (“Dr. Bell does not provide the factual basis for his testimony.”); ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378, 1384 (Fed. Cir. 2020) (referencing Dr. Bell's testimony as “conclusory and unsupported” and “unhelpful and unpersuasive”).
See Dkt. 43, Order Consolidating Cases. In June 2020, the parties stipulated to dismiss with prejudice all claims and counterclaims relating to Patent No. 9, 415, 130, following the Federal Circuit's decision in ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020), cert. denied, 141 S.Ct. 557, 208 L.Ed.2d 178 (2020). On April 29, 2021, the court issued its Order Construing Claims under the '418 Patent.Now before the court is Defendants' Motion for Summary Judgment.
See Dkt. 43, Order Consolidating Cases. In June 2020, the parties stipulated to dismiss with prejudice all claims and counterclaims relating to Patent No. 9,415,130, following the Federal Circuit's decision in ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 557, 208 L. Ed. 2d 178 (2020). Now before the court are the parties' Cross-Motions for Claim Construction.