Estoppel

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FWD Boilerplate Encourages Rework

Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim (IPR/PGR/reexam). Last week the Federal Circuit clarified the scope of this rarely applied PTAB rule in SoftView v. Apple.

In practice, the agency has very rarely applied Rule 42.73. Examiners don’t appear to be aware of the rule when prosecuting continuation filings or reexamination/reissues. To my knowledge there has been no examiner training and there are no MPEP insert paragraphs. And PTAB judges prefer to re-apply the art used to cancel the earlier claims over a less familiar estoppel analysis.

Far more troubling, however, is the PTAB practice of suggesting to Patent Owners that they may obtain new/amended claims after claim cancellation in an IPR/PGR through patent reexamination or reissue. Continue Reading CAFC Backs Patent Owner Estoppel – PTAB Should Stop Suggesting Otherwise

PTAB-legislation

Estoppel Reasonably Could Have Raised During Trial?

The challenge to the IPR estoppel statute in Apple et al., v. California Institute of Technology focused on the statute’s use of “during.” That is, whether “reasonably could have raised” is assessed at the time the petition is drafted, or, during the actual proceeding as stated in the statute.

While the Court passed on the question today, its reasoning could be in conflict with contrary Federal Circuit precedent.Continue Reading SCOTUS Passes on Scope of IPR Estoppel – Joinder Scope Remains Uncertain

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Unnecessarily Ambitious

Late last week the USPTO issued an Advanced Notice of Proposed Rulemaking (ANPRM) that floated numerous rule proposals and requests for feedback — too numerous. Proposals addressing current 314(a) and 325(d) practices were not only expected, but long overdue. While these expected proposals were included in the sprawling Notice, the rule-making process will undoubtedly be bogged down by the remaining collection of controversial ideas and administrative over-reach.

Keep in mind that 314(a) Fintiv practices could soon be struck down as improper circumvention of APA rule-making. Stalling the issuance of those rules for at least another 12-18 months – if not longer – seems like a bad idea. My guess is political pressure from outside the agency led to the laundry list of additional proposals. Especially as they relate to for-profit entities in the wake of the Open Sky debacle.

Regardless, of how or why the expansive ANPRM came to be, I’ll walk through each proposal/idea in detail below (ANPRM here)Continue Reading PTAB Rule Ideas – The Good, The Bad, & The Ugly

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Burden on Proponent of Affirmative Defense

Back in 2016 district courts started encountering infringement suits where the subject patents had survived PTAB challenge. In such scenarios, estoppel applied to failed petitioners under 35 U.S.C. § 315(e)(2). To asses whether invalidity defenses asserted in the later court case should be estopped as arguments that “reasonably could have been raised” in the failed IPRs, the courts needed to determine whether the newly asserted art could have been located by a reasonably skilled searcher at IPR filing. But, 325(e)(2) is silent as to which party bears the burden of proof on this issue of estoppel.

That is, does the Patent Challenger have to show that it could not have found the art with reasonable diligence, or, does the Patent Owner have to show that art could have been found with reasonable diligence?

Most courts held that since estoppel was an affirmative defense, the burden fell on the proponent patent owner. Today, in a precedential decision, the Federal Circuit agreed.Continue Reading PTAB Estoppel Proof Falls to Patent Owners

Scope of Estoppel Considered for Review

IPR estoppel is defined by 35 U.S.C. 315(e). The statute recites in relevant part that any claim subject to a failed IPR may not be argued by that petitioner in an infringement action as “invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 315(e)(2)

While there has been much debate in the lower courts as to the scope of “reasonably could have raised,” and even “ground,” the debate currently before the SCOTUS in Apple et al., v. California Institute of Technology turns on the meaning of “during.” That is, whether “reasonably could have raised” is assessed at the time the petition is drafted, or, during the actual proceeding. If estoppel is determined at the outset of petition drafting that scope is far broader than what could be added to an ongoing IPR proceeding (i.e., next to nothing).

Should this question ultimately taken up, the outcome could have significant consequences.Continue Reading SCOTUS Seeks Gov’t Input on IPR Estoppel

Re-work Frustrates Patent Owners & The System

I have written about Patent Owner estoppel for years. That is, estoppel stemming from claims cancelled in PTAB trial proceedings. This estoppel is based on the idea that, if you have an amendment to bring to a given claim set, you should bring that amendment during the trial — not thereafter, such as in a patent reissue, reexamination or continuation application.

Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim. But, it is fairly common for unsuccessful Patent Owners to go right back after a PTAB loss and pursue substantively identical claims through patent reissue or reexamination. Why?

Patent Owners are not gluttons for punishment, they are just following the directions of the agency.Continue Reading PTAB Estoppel is Confused By the USPTO

Reasonably Could Have Investigated in PGR?

Last month the Federal Circuit recalibrated the scope of IPR estoppel by overruling Shaw Industries. That is, after the SCOTUS decision in SAS Institute, the Court concluded that IPR “raised or reasonably could have raised” estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all claims and grounds not in the IPR but which reasonably could have been included in the petition.

As to “reasonably could have been raised,” this assessment  considers what information was known to the filer, and when, or, what might have been uncovered via a reasonably diligent search.  In the case of a PGR proceeding — allowing a broader range of validity challenge types relative to IPR — this “reasonably could have raised” estoppel footprint poses a significant risk to patent challengers.
Continue Reading PGR’s Scary Estoppel Footprint

Dispute Over Reexamination Vacatur Sent Back to VA Court

The recent trend of denying PTAB trial petitions on discretionary grounds has been argued to frustrate the purpose of the America Invents Act (AIA).  Indeed, patent reexamination filings — the clunky mechanism the AIA was supposed to supplant — surged by 60+% last year.  With stakeholders unhappy with how the PTAB is operating, interesting questions are being raised on when/how a reexamination remains viable after a failed AIA trial petition.

Last year, the Federal Circuit considered the timing of a Patent Owner 325(d) challenge to a follow-on reexamination after a failed IPR petition. This week, the Federal Circuit considered whether a petitioner that has been denied a reexamination can seek further review via an APA action of the district court.
Continue Reading Reexamination Denial Subject to APA Judicial Review

Federal Circuit Overrules Previous Decision in Shaw Industries

Prior to the SCOTUS decision in SAS Institute, partial trial institutions were not uncommon.  Whether a proposed trial ground was found “redundant,” and excluded from trial, for example, created a strange estoppel calculus as to what “reasonably could have been raised” in that context.  That is, when a ground was raised, and was administratively barred from trial, how could estoppel be found as to that ground?

The short answer:  it wasn’t.  That was the decision of the Federal Circuit in Shaw Industries.

Since Shaw, partial institutions were barred by the Supreme Court in SAS Institute, which found all claims and grounds must move to trial if one claim is found reasonably likely to be found unpatentable.  Last week, the Federal Circuit finally had an opportunity to revisit Shaw.
Continue Reading CAFC Clarifies IPR Estoppel Post-SAS Institute

Different Filing Dates Accorded to Petitions Filed on the Same Day

One of the more annoying aspects of PTAB practice is the variability in the agency’s issuance of Filing Date Notices.  In some cases, the Notice — an agency paralegal function — can come within a week or two of filing a petition (as it should), while in others, weeks later.  Since a Patent Owner’s Preliminary Response is due three months from the date of the Notice, different dates across related petitions can create a problematic misalignment in schedules.

Last week, the Federal Circuit considered whether 315(e)(1) estoppel can terminate one of two petitions filed on the same day, where one is decided earlier than the other as a simple result of a difference in schedules.
Continue Reading PTAB Paralegal Delay Dooms Parallel Petition