Estoppel

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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

New Tactics & Risks for Litigators

On Monday, I laid out my Top 5 PTAB cases of 2019 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like Monday’s list, my Top 5 PTAB developments of 2019 for District Court Litigators will focus on those practical developments that will impact related litigation practices outside of the agency.

In 2019, there were a number developments of interest to litigators, from tricks to avoid the PTAB altogether, to new risks on fee awards and estoppel.  
Continue Reading Top 5 PTAB Developments of 2019 for District Court Litigators

Reasonably Could Have Raised & Reasonably Diligent

Prior to last year’s SAS decision, district courts split over whether non-petitioned grounds were embraced by the “reasonably could have raised” aspect of 35 U.S.C. §§ 315(e)(2) and 325(e)(2) estoppel.  However, a growing number of district courts post-SAS have construed this phrase to define grounds that a party could have included in its petition, but did not.  In doing so, the courts are also making clear that the burden of proving that a ground could have reasonably have been raised, lies with the Patent Owner.
Continue Reading Courts Apply More Flexible Analysis to PTAB Estoppel

“Known or Used” Not a Side-Step to PTAB Estoppel

Keeping with yesterday’s discussion of Patent Trial & Appeal Board (PTAB) estoppel in the district courts, a decision from earlier this year on yet another aspect of this estoppel has been recalibrated. Back in January, the Central District of California explained in The California Institute of Technology v. Broadcom Limited, et al., that IPR estoppel (35 U.S.C. § 315(e)(2)) applies where the same IPR reference is later raised in court under the “known or used” prong of pre-AIA 35 U.S.C. § 102(a) instead of as a “patent or printed publication” as done in the IPR.

Upon Motion for reconsideration, the Court has agreed that it’s earlier Order required further clarification.
Continue Reading Courts Continue to Explore Reach of PTAB Estoppel & Standards for Assessing Exceptions

User Manuals & Corresponding Product Estoppel under 315(e)(2)

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 estoppel. That is, by virtue of utilizing product manuals in the earlier PTAB proceeding, whether the actual products described “were raised, or reasonably could have been raised” under 35 U.S.C. § 315(e)(2).

The view of some districts has been that it does not, unless the Patent Owner (estoppel proponent) demonstrates that the product described in the previously examined manual is technically superior to the manual teachings. Yet, other districts are adopting an absolute prohibition..
Continue Reading Physical Counterparts of PTAB Utilized Product Manuals Estopped in Some Districts

Standing Dispute Highlights 315(e)(2) Estoppel Concern

Article III standing has been a problem for certain petitioners seeking review of adverse Patent Trial & Appeal Board (PTAB) AIA trial rulings. This is because, while the AIA statutes provide that anyone other than a patent owner may challenge a patent at the PTAB, Article III standing is necessary for petitioners to appeal adverse PTAB decisions to the Federal Circuit. Phigenix, Inc. v. ImmunoGen, Inc.  Since Phigenix, there have been a number of Federal Circuit decisions exploring the degree of harm necessary to convey Article III standing in this context.

Earlier this week, the Federal Circuit analyzed “competitor harm” as a basis for Article III standing along with the potential of adverse estoppel impact of 35 U.S.C. §315(e)(2) on the petitioner.. While the competitor harm analysis may be interesting from an academic standpoint, the more meaningful discussion for practitioners is the Court’s commentary on the 315(e) estoppel impact for such petitioners. 
Continue Reading Finality Aspect of Common Law Estoppel May Not Matter for PTAB Estoppel Under 315(e)