By Scott A. McKeown
| March 6, 2012
Rules to Implement Post Grant Proceedings to Add New Layer of Patentee Estoppel

Rules to Implement Post Grant Proceedings to Add New Layer of Patentee Estoppel


The estoppel impact of inter partes patent reexamination (IPX) has long been a concern for third party requesters. Should an IPX requester fail in its attempt to invalidate a patent before the USPTO, the estoppel provisions preclude a subsequent attempt to invalidate the same patent in a district court (at least based upon patents and printed publications).

For the new post grant proceedings of the America Invents Act (AIA) the same basic concept exists for requesters― one bite at the apple. However, the estoppel is triggered substantially earlier. In post grant proceedings under the AIA estoppel under 35 USC 315 attaches upon the issuance of a final written decision, which should occur around a year and a half from the filing of the petition for review in a typical case. In contrast, IPX estoppel attaches only upon issuance of the reexamination certificate, after exhaustion of all appeals to Article III courts.

Perhaps even more significantly, the proposed rules to implement the Post Grant Review and Inter Partes Review proceedings add a new layer of estoppel against Patentees.

The impact of this proposed change would be devastating for large patent filers.

After a final written decision cancelling a claim the Patentee would be precluded from later obtaining any patent claim that could have been presented in the Post Grant Review (PGR) and Inter Partes Review (IPR) proceedings.More specifically, Rule 42.73 (d)(3) of the PTAB Rules of Practice provides as follows:
(3) Patent applicant or owner. A patent applicant or owner whose claim is canceled is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent:

(i) A claim to substantially the same invention as the finally refused or cancelled claim;

(ii) A claim that could have been filed in response to any properly raised ground of unpatentability for a finally refused or cancelled claim; or

(iii) An amendment of a specification or of a drawing that was denied during the trial proceeding.

The implications of this new Patentee estoppel could be significant for patents which have pending continuation applications. Under proposed Rule 42.73 when one or more of the parent patent claims are cancelled in a post grant proceeding the question arises as to whether claims in the continuation applications “could have been filed in response to any properly raised ground of unpatentability” in the post grant proceeding.

Consider the situation where the parent patent has a broad, generic claim that is cancelled. If the continuation (or reissue) applications present claims narrower in scope than the broad claim which was cancelled and if one assumes that the specification is identical in relevant respect, arguably, the narrow claim could have been presented as a substitute claim in the post grant proceeding. If the Office operates under the premise the continuation application claim should be barred under Rule 42.73(d), the Patentee would be effectively forced to introduce the arrowed, continuation claims in the IPR or PGR proceeding or lose them altogether. Yet, the proposed rules do not provide a mechanism for introducing distinctions en masse outside of a "reasonable number of substitute claims." In fact, there is a "presumption" that a reasonable number of claims are those presented in one-to-one correspondence with respect to cancelled claims.

On the other hand, where continuation claims (or those in a broadening patent reissue) are broader in one or more respect than the parent patent the Patentee may have a meritorious argument that the claim could not have been properly presented in the post grant proceeding in view of the statutory prohibition against broadening claims in such a proceeding. This may enable Patentees to circumvent the Rule 42.73 estoppel by simply ensuring that their claims are broader than the cancelled claim in at least one respect.

The Office would be opening up quite a can of worms by establishing a system in which all claims of a portfolio would need to be analyzed with respect to claim scope after a post grant claim cancellation.
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