SSL Services, LLC v. Cisco Systems, Inc.

In 2000, the United States Patent Office (PTO) examined and granted U.S. Patent No. 6,158,011. Over the next 16 years, the ’011 Patent produced some $22-million in infringement and licensing revenue. During that same time, the patent withstood scrutiny from nine PTO and judicial reviews challenging the patent’s validity. This included three PTO reexaminations, two PTO de novo reviews of those reexaminations, a district court jury verdict and judgment, and a 2014 precedential Federal Circuit decision. In 2015, Petitioner SSL sued Respondent Cisco for infringing the ’011 Patent. Cisco responded by filing a request for inter partes review (IPR) at the PTO, using the same prior art that the patent had already repeatedly overcome in those prior reviews. Yet, instead of denying Cisco’s request as duplicative and barred by the “Multiple-Proceedings” rule, 35 U.S.C. § 325(d), the PTO decided to review the patent once more—the tenth review of the ’011 Patent’s validity. The PTO compounded this error by thereafter incorrectly concluding what none of the other nine prior PTO or judicial reviews had: that the ’011 Patent was invalid as obvious over this previously presented and rejected prior art. In refusing to apply § 325(d), the PTO emphasized that Cisco was not the same party that had prompted the PTO’s prior reviews. But this ruling contravened the statute’s text and structure, as well as Congress’s intent. Congress did not limit § 325(d) to blocking the same party from launching multiple