Failed Inter Partes Patent Reexamination Challenges to be Resurrected?

When Congress provided for inter partes patent reexamination (IPX) in the 1999 American Inventors Protection Act, estoppel provisions were fashioned to prevent abuse of the new, post grant mechanism.

The IPX estoppel provisions are codified as 35 U.S.C. § 315 (c) and § 317 (b). Section 315(c) prevents a requester in IPX from pursuing failed arguments in a district court, correspondingly, 317 (b) prevents a requester that has failed to prove invalidity in an IPX, or at the district court from requesting a second IPX on any issue that was raised or could have been raised in the failed proceeding.

Interestingly, 317 (b) precludes a second IPX (outside of very limited circumstances, “newly discovered” art.). Yet, with IPX being replaced by Inter Partes Review (IPR) in less than a year, have failed IPX challengers been given an unexpected reprieve from the estoppel impact of 317(b)? That is to say, is there anything stopping a request for IPR by a challenger that has previously failed to prove invalidity in IPX?

The answer to this question will depend on whether or not the Requester is involved in a parallel litigation.

Inter Partes Review as currently written in the pending legislation, includes 35 U.S.C. § 315. Section 315(b) is entitled “Patent Owner’s Action,” and provides as follows:

An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.

(emphasis added)

Clearly, an IPR would be barred by an IPX requester that has been involved in a lawsuit for longer than 12 months. As most IPX filings are related to a parallel litigation, and a final decision in IPX spans several years, there is a practical estoppel effect.

However, what about a failed IPX challenge that does not have associated litigation?

317 (b) is quite specific in precluding a second IPX, which makes sense as when it was written there were no other forms of inter partes challenges at the USPTO for challenging validity. The USPTO has also refused to extend this provision to other office proceedings in the past (See Sony v. Dudas). For example, the USPTO will allow a second ex parte patent reexamination request by an earlier IPX Requester even though such appears to violate the spirit of the estoppel concept.

Likewise, the aspect of the new Inter Partes Review statute that applies to USPTO proceedings is as follows:

315 (e) Estoppel

(1) PROCEEDINGS BEFORE THE OFFICE- The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

(emphasis added)

Come September 16, 2012, it may be that certain failed IPX challengers take advantage of the opportunity to get a second bite at the apple.