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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for October 31st, 2012

Hedging Against Petitioner Estoppel at the PTAB

Posted On: Oct. 31, 2012   By: Scott A. McKeown
PTAB_EstoppelReasonably Could Have Raised?

The new post grant trial proceedings of the Patent Trial & Appeal Board (PTAB) provide game changing opportunities for patent challengers. These opportunities include the virtual guarantee that certain business method patent litigation will be stayed pending the outcome of a Covered Business Method (CBM) patent challenge, and the ability to challenge an entire portfolio at one time. Indeed, the later opportunity was never before possible in any proceeding, USPTO, district court, or otherwise.

Yet, the new proceedings are not without some risk. For example, Inter Partes Review (IPR), much like its’ predecessor inter partes patent reexamination, operates to estop the challenger from making arguments in a later proceeding that were either raised or “could have been raised” in the previously concluded PTO proceeding. This “could have been raised” estoppel was revised for IPR proceedings, slightly, to embrace issues that “reasonably could have been raised.” The legislative history indicates that this change was designed to impart some term of degree of practicality to the new IPR estoppel standard.

While the prospective estoppel that may apply to petitioners of IPR proceedings has been softened, unlike patent reexamination requests, IPR petitions are limited to 60 double spaced pages. So, practically speaking, there are a limited number of issues that can be presented in 60 double spaced pages.

How will this IPR page limitation impact the “reasonableness” analysis of the district court? Read the rest of this entry »