Collateral estoppel

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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

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

Unchallenged Claim Falls on Summary Judgement

Back in 2016, I flagged a few district court decisions that leveraged Patent Trial & Appeal Board (PTAB) fact-finding on summary determination. These decisions weighed the fact finding of the expert agency as “compelling evidence” and noted the Board”s “expertise in evaluating prior art and assessing patent validity.”  While crediting the fact finding on common technical issues, these decisions stopped short of finding outright issue preclusion based upon the earlier PTAB proceeding.

However in some instances, PTAB determinations might be leveraged to attack claims that slipped through the PTAB net.
Continue Reading PTAB Collateral Estoppel as Summary Judgment Tool