A Federal Circuit panel on Friday examined whether the Patent Trial and Appeal Board (PTAB) improperly blocked Simpson Strong-Tie Co. Inc.'s attempt to challenge the validity of claims that were corrected during a post-grant review. The panel also discussed whether these corrected claims could be addressed in district court.

Simpson argues that the PTAB wrongly rejected its request to challenge the validity of claims for which Columbia Insurance Co. had received a certificate of correction. Simpson contends this refusal violated the Administrative Procedure Act and hindered its effort to invalidate certain claims from Columbia’s construction hanger patent.

Scott Eidson, representing Columbia, told the panel that Simpson had an opportunity to request relief from the PTAB but failed to do so. "At no point did they seek accommodations from the board to raise any additional argument related to those claims," Eidson said.

However, Simpson’s attorney, Richard Crudo, countered, stating that his client had requested to brief the effect of the certification of correction, but the board had made it clear they would not entertain the issue. "This is really the crux of the APA violation," Crudo argued.

U.S. Circuit Judge Raymond T. Chen pointed out that Simpson had already challenged the validity of two other claims from the certificate, which were invalidated for indefiniteness and lack of written description. "The board agreed with those arguments notwithstanding the certificate of correction," Crudo responded.

Columbia's counsel objected to Simpson challenging some claims but accepting the invalidation of others, asserting, "It can't have it both ways."

Judge Chen raised the question of whether the PTAB had definitively ruled on the corrected claims. Eidson asserted that the PTAB had, but Judge Chen pressed on whether the board had directly passed on the corrected claims.

During the session, Judge Richard G. Taranto suggested that if the court clarified that the corrected claims were not part of the PTAB proceedings, Simpson might still address them in other legal actions. Crudo affirmed that related infringement litigation exists involving the corrected claims, which could be challenged in district court.

Simpson's legal team also indicated they reserve the right to challenge the validity of the certificate of correction in the future, despite there being no current litigation on the matter. The panel further explored the issue of estoppel, with Eidson arguing that estoppel would apply if Simpson could have raised the corrected claims but did not.

The case centers around U.S. Patent No. 11,021,867, and the Federal Circuit panel included Judges Jimmie V. Reyna, Richard G. Taranto, and Raymond T. Chen.

The case is Simpson Strong-Tie Co. Inc. v. Columbia Insurance Co., case number 23-1944, in the U.S. Court of Appeals for the Federal Circuit.

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