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

Amendment Based Estoppel at PTAB?

Remember the Doctrine of Equivalents (DOE)?

DOE was that folksy doctrine that allowed some wiggle room in proving patent infringement where a claim term was not literally met.  That is, DOE allows a patent owner to reach an equivalent claim element functioning in the same way, to achieve the same result that is utilized to side-step the literal claim language.  DOE is the type of legal argument that litigators live for.  Unfortunately, the doctrine was all but laid to rest decades ago in the Supreme Court’s Festo decision as most prosecution changes will foreclose DOE.  Still, there is an occasional throwback case that attempts to litigate DOE.

Most recently, Columbia University faced a summary judgment motion arguing that its DOE-based assertion was precluded by amendment based estoppel — as a result of PTAB claim cancellation alone.
Continue Reading Cancelling Claims at the PTAB & The Doctrine of Equivalents

October Webinar to Debrief on Leahy Bill

Senator Patrick Leahy (D) VT and Senator John Cornyn (R) TX have jointly drafted a new bill entitled the “Restoring the America Invents Act.” The Bill proposes to roll-back recent directives and policies of former USPTO Director Iancu, most notably discretionary denials of AIA trial proceedings in view

Same Questions, Different Rubric?

Senator Patrick Leahy has now proposed draft legislation to add Obviousness-Type Double Patenting (OTDP) to IPR jurisdiction. The argument for adding this potential ground is that it is an important control to combat improperly extended drug monopolies (the justification underlying much of the legislative proposal).  Whether this provision makes it to law is far from clear given the likely push back from Bio/Pharma.

In the meantime, a Pharma dispute recently argued that OTDP is basically the same PTAB obviousness analysis under a different rubric.  An awkward argument given the coming storm.
Continue Reading PTAB Estoppel & Double Patenting?

Bill Released – Iancu Era Rebuked

Well, the wait was not that long after all.  Senator Leahy -VT (D) (with co-sponsor Senator Cornyn – Tx (R)) has today released the draft bill entitled “Restoring the America Invents Act.”  The bill includes most of what I expected, with a handful of additional tweaks.

Below is a brief overview of all of the proposed changes.
Continue Reading Restoring the America Invents Act – What You Need to Know

What is “Materially Identical?”

The doctrine of issue preclusion can prevent an issue previously litigated at the PTAB from being re-litigated in a later proceeding, such as in the district court. In order for issue preclusion to apply, a “materially identical” issue must have been “actually litigated and determined by a valid and final judgment,” where the determination was “essential to the judgment.” See Papst Licensing GMBH & Co. KG v. Samsung Elecs. Am., Inc., 924 F.3d 1243, 1252 (Fed. Cir. 2019). Thus, once appeals have been exhausted, the determinations in a FWD from the PTAB may have preclusive effect in future actions, even on related patents so long as they raise “materially identical” issues.

Which begs the question: What is the scope of materially identical?
Continue Reading PTAB Decisions & Issue Preclusion

FWD Statutory Estoppel vs. Collateral Estoppel

In designing the America Invents Act (AIA), statutory estoppel of 35 U.S.C. § 315(e)(2) was set to by legislators to attach at the time of the PTAB’s Final Written Decision (FWD).  This is despite the fact that further appeals are routine.  This statutory design was responsive to the previous criticism of inter partes reexamination estoppel, which attached only after all appeals were exhausted.

Yet, this statutory design often puts district courts in the unenviable position of treating an otherwise non-final decision, as final……at least with respect to petitioner estoppel.  As to claims that may be cancelled in the same FWD, courts are free to await further appeals.

This unbalanced scenario can be exploited by Patent Owners.
Continue Reading Patent Owner Uses FWD Cancelling Claims as a Sword & Shield