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.
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Court Takes Offense to Tactics Geared to PTAB Alone

Litigants beware; Judge Rodney Gilstrap (E.D. Texas) warned litigants considered to be using the district court proceedings to posture positions in co-pending CBM proceedings that ‘[t]he Court does not countenance—in fact this Court is offended by—the strategic use of an Article III Court to gain a tactical advantage in any parallel proceeding.”

But, this dispute may be a preview of things to come as the Patent Trial & Appeal Board (PTAB) aligns itself with the Phillips construction of the courts.


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