Are Continuation Patents Still Viable After a Parent is Cancelled?

Patent families are formed of multiple continuation/divisional filings stemming from the same disclosure. Typically, continuation patents present marginally different claim sets.  An age old prosecution strategy is to keep a continuation pending to adapt claim sets in an iterative fashion to competitor designs. But what is the impact of the PTAB cancellation of a parent patent’s claims on such pending continuations?
Continue Reading Patent Family Viability After a PTAB Loss?

Joinder Estoppel Revisited

A few weeks back, the federal Circuit handed down a decision in Uniloc 2017 LLC v. Facebook Inc, capping off a complicated procedural history.  In its decision, the Court sorted out the estoppel impact of IPRs finishing a few months earlier than others, and what that meant for parties common to these IPRs.

Left unanalyzed, however, was whether or not the PTAB’s initial finding of estoppel was appropriate in the first instance given the peculiar manner by which parties are joined to PTAB proceedings via copy-cat petitions.
Continue Reading Evolution of PTAB Joinder Estoppel

Inconsistency Across Related Cases is Precluded

When challenging related patents at the Patent Trial & Appeal Board (PTAB), it is not uncommon to present similar grounds of unpatentability across related filings— for example, where the claim sets are substantially similar.  In such scenarios, it is expected that the PTAB will arrive at consistent determinations across the filings. Of course, there is no guarantee, that the same judge will decide all of the cases.  In such instances, there is a possibility of inconsistent results, especially where the challenges are advanced at different times.

For example, party A might challenge a parent patent in an IPR, and lose on a question of obvious under 103.  When a continuation patent issues a bit later, Party A may attempt to challenge the continuation on the same grounds (perhaps bolstered by a better presentation or additional evidence).  In such a scenario, is the Board free to change its mind?  Or is the Board collaterally estopped given the earlier determination, and the same party pursuing the same argument?

Continue Reading Collateral Estoppel in AIA Trial Proceedings

New PTAB Roadblocks & Strategies

Earlier this week I laid out my Top 5 PTAB cases of 2020 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like the practitioner list, my Top 5 PTAB developments of 2020 for District Court Litigators will focus on those practical PTAB developments that will impact parallel litigation practices outside of the agency.

In 2020, there were a number developments of interest to litigators, from litigation forums where a PTAB challenge is foreclosed or highly unlikely, to stipulations for avoiding PTAB discretionary denials, and new risks of collateral estoppel across a litigated portfolio.
Continue Reading Top 5 PTAB Developments of 2020 for District Court Litigators

Joinder Estoppel Narrower Than Original Petition Estoppel

Court’s have struggled with the meaning of the “reasonably could have raised” aspect of 315(e)(2) IPR estoppel. The CAFC has not had much opportunity to weigh in on this issue…. yet. But, last week the Court provided guidance on what is “reasonably raised” when a party joins an IPR petition under § 315(c).  Based on the Court’s decision, joinder may become a more attractive option for co-defendants in multi party litigations.
Continue Reading PTAB Joinder Provides Estoppel Benefit

PTAB Invalidation of Original Claims Bars Pre-issue Damages for Reissued Claims

A surprisingly underutilized patenting mechanism — the reissue patent application — should be an essential component of any portfolio building practice.  The reissue application allows patent owners to correct/adjust claim scope (in some cases broaden), add additional claims, and perform a number of other corrections to an originally issued patent prior to asserting it.

For example, where a Patent Owner has its claims cancelled that the PTAB, the Patent Owner may seek to reissue its patent thereafter with new, narrower claims.  (This option may be more attractive than the PTAB’s amendment process, which is limited in the number of claims that may be raised, and, reissue is not an inter partes process).

But, reissue is not  a magic time machine. That is, trying to resurrect a damages case linked to your earlier cancelled claims by arguing that your narrowed, reissue claims are somehow the same scope, is a losing argument (not surprisingly)
Continue Reading Reissue Claims Substantially Identical to Invalidated Claims Ensnared by Collateral Estoppel

Public Policy Role of PTAB Clashes with Assignor Estoppel Equities

The doctrine of assignor estoppel prevents prior owners/inventors of a patent from later challenging the patent’s validity.  Assignor estoppel’s premise is that the assignor “should not be permitted to sell something and later assert that what was sold is worthless, all to the detriment of the assignee.” Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220, 1224 (Fed. Cir. 1988).

While exceptions to assignor estoppel have existed since its inception, the Federal Circuit has found that the AIA can be leveraged to circumvent the doctrine—that is, while a prior owner of a patent may not challenge the patent’s validity at district court, it may challenge the validity at the PTAB.
Continue Reading Assignor Estoppel & the PTAB

PTAB Estoppel & Inequitable Conduct

Inequitable conduct before the USPTO is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. Thereasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011).  Given the increasing inventory of Final Written Decisions (FWD) in larger patent portfolios, practitioners are only now beginning to confront issues of inequitable conduct relating to agency based estoppel.  That is, if a patent owner advances a position inconsistent with a previous PTAB FWD on a patent/related patent under 37 C.F.R. § 42.73(d)(3), whether such a practice constitutes inequitable conduct. It just might.

But, for the time being, the courts’ lack of experience with the PTAB’s rule-based estoppel is benefiting patent owners.
Continue Reading Patent Prosecution After an Adverse PTAB FWD – Beware

District of Delaware Considers Physical Products & Redundant Publications

Back in August, I pointed out that district courts continue to grapple with whether or not physical products described by prior art publications of an earlier Patent Trial & Appeal Board (PTAB) trial are subject to 315(e)(2) estoppel. That is, by virtue of utilizing a product manual in the earlier PTAB proceeding, whether the actual products corresponding to such a manual can be considered “raised, or reasonably could have been raised” under 35 U.S.C. § 315(e)(2).

The view of some districts has been that since physical products can’t be raised at the PTAB, such evidence is simply outside the scope of estoppel.  Others take a narrower view, weighing the potential technical superiority of the physical product to the previously used publication.  In another twist on this fact pattern, the District of Delaware recently considered whether the underlying evidence of these disputes should be the focus at all.
Continue Reading PTAB Estoppel: Grounds vs. Evidence

Adding New Blood into the Estoppel Mix

IPR estoppel under 35 U.S.C. § 315(e)(2) provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added).  As pointed out previously, a growing number of district courts have construed the phrase the “reasonably could have raised” aspect of 35 U.S.C. §§ 315(e)(2) to define grounds that a party could have included in its petition, but did not.

Assuming a failed petitioner can locate a piece of prior art that it could not have raised earlier (and make the appropriate showing to avoid estoppel) are combinations with failed art of the IPR precluded?
Continue Reading Rehabilitating Failed PTAB Art