Reasonably 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?

Recently, some IPR petitioners have attempted to get out in front of this issue. For example, in (IPR2012-00006), the petitioner sought waiver of the page limit (here) explaining:

Substantial, material prior art is available which demonstrates that claims of the ‘698 patent for which review is sought are invalid. Petitioner has drafted the Page Limited Petition to provide the arguments and analysis as succinctly as possible. However, even with such succinct drafting, the 60 page limit will bar the Petitioner from making any additional grounds for invalidity. Accordingly, Petitioner respectfully submits that in the interests of justice, the 60 page limit must be waived for the present petition due to the number of invalidating and noncumulative prior art references available and due to the length and number of claims challenged. Failure to grant this petition will prevent Petitioner from raising or reasonably raising any additional grounds for invalidity such as those included in the Proposed Petition.

(emphasis added)

In their opposition (here), the Patentee noted that:

The Board explicitly rejected the suggestion that “page limits be based, in whole or in part, on the number of grounds raised or number of proposed

rejections in a petition.” 77 FED. REG. 48,635 (Aug. 14, 2012). Indeed, if a single Petition limited to 60 pages was not sufficient to address all of Illumina’s proposed rejections, Illumina could have filed multiple petitions (and paid the appropriate fees) directed to subsets of related claims in the patent-at-issue, but chose not to do so. 77 FED. REG. 48,635 (Aug. 14, 2012) (where one petition is not sufficient, “multiple petitions directed to subsets of related claims should be considered.”).Thus, Illumina’s statement that “the 60 page limit will bar the Petitioner from making any additional grounds for validity” (D.I. 4 at 2) rings hollow.

(emphasis added)

It seems likely that the PTAB will continue to see motions for waiver of page limits, particularly for cases in involved in concurrent litigation. Where concurrent invalidity positions are being filed with the courts (without concern of page limits), additional grounds not found in the IPR petition are almost certainly to be on the record as issues that “reasonably could have been raised” in the IPR petition.  For this reason, there may be a greater degree of “placeholder motions” in IPRs that are conducted in parallel to litigation proceedings.