estoppel

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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

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

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)

The Impact of SAS Institute on Statutory Estoppel

IPR estoppel is established under 35 U.S.C. § 315(e)(2), which 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). Prior to the Supreme Court’s decision in SAS Institute, the courts did not apply statutory estoppel to grounds upon which the Patent Trial & Appeal Board (PTAB) refused to institute trial. The reasoning was that statutory estoppel under 35 U.S.C. § 315(e)(2) only applied to grounds adjudicated in a Final Written Decision (FWD).  As such, grounds shaken out (i.e., partial institutions) prior to trial could not be covered by such estoppel.

Post-SAS, of course, there are no longer partial institutions and this previous distinction simply goes away.  But what happens to those partially instituted cases that remain pending, can a petitioner side-step the revived SAS grounds in the hope of holding onto this estoppel exception? 
Continue Reading Failure to Pursue SAS Grounds Leads to Statutory Estoppel