Six days after issuing a final decision holding the claims of U.S. Patent No. 7,711,100 unpatentable under 35 U.S.C. § 101 in a first CBM review, Square, Inc. v. Unwired Planet, LLC, CBM2014-00156, (PTAB Dec. 22, 2015), the PTAB issued a decision denying institution in a second CBM Petition filed by the same Petitioner for the same patent, determining that the petitioner was estopped under 35 U.S.C. § 325(e)(1) from raising the grounds of the second petition, based on a later-identified, prior-art patent and later-obtained declaration evidence, because the later-identified prior art could have been discovered earlier and because it was foreseeable that the additional declaration evidence would have been needed in the first case. Square, Inc. v. Unwired Planet, LLC, CBM2015-00148, Paper 14 (PTAB Dec. 28, 2015). The non-institution decision provides a good review of the application of § 325(e)(1) estoppel as applied to later-identified prior art and later-obtained evidence.

“[t]he issue is not whether Petitioner knew about Orlen, but whether Petitioner reasonably could have discovered Orlen and raised the newly asserted grounds at the time of the earlier petition.”

Section 325(e)(1) estops a petitioner in a PGR or a CBM from requesting or maintaining a proceeding before the Office with respect to a claim on any ground that the petitioner raised or reasonably could have raised during a prior PGR or CBM that results in a final written decision of that same claim. Here, in its original CBM Petition, Square, Inc. challenged claims 1-4 of the ‘100 patent under 35 U.S.C. § 101 as well as under 35 U.S.C. §§ 102(b) and 103(a) based on two prior art references: the Vazvan paper, a Ph.D. thesis obtained from a Finnish library, and the Bouve patent. The PTAB subsequently instituted CBM review based on the § 101 grounds, but denied institution on the §§ 102 and 103 grounds because the Petitioner had not sufficiently proven the date on which the Vazvan paper was publically available. In its subsequent CBM Petition, Square again challenged claims 1-4 of the ‘100 Patent under 35 U.S.C. §§ 102(b) and 103(a) based on Vazvan and a newly identified Orlen patent, also relying on a new declaration of an information specialist at a Finnish library, to provide additional evidence as to the date the Vazvan paper was publicly available. Because both the Orlen patent and the new declaration evidence were first obtained only after the initiation of the ‘156 CBM, the Petitioner argued that it should not be estopped from raising the new grounds based on this evidence, because the new evidence was not available and thus it could not have raised grounds based on this evidence in the first CBM petition. The PTAB was not persuaded by these arguments.

First, relative to the Orlen patent, the PTAB reasoned that “[t]he issue is not whether Petitioner knew about Orlen, but whether Petitioner reasonably could have discovered Orlen and raised the newly asserted grounds at the time of the earlier petition.” Because Orlen was a U.S. patent published well before the time of the first CBM petition, the PTAB was not persuaded that Orlen could not have been found prior to the filing of the original petition. Therefore, even though the Petitioner did not have actual knowledge of the Orlen patent at the time of the original CMB petition, the subsequent CBM petition grounds based on the Orlen patent were barred under Section 325(e)(1) because Orlen could have been found at the time of the original petition.

Second, relative to the Vazvan paper and the additional declaration evidence of its date of public availability, the PTAB reasoned that “[t]he question when considering the applicability of 35 U.S.C. § 325(e)(1) to the Petition in [the later CBM] is not whether the arguments in [the prior CBM] were “maintained” or “raised” in [the prior CBM], but rather whether Petitioner “reasonably could have raised” those arguments in [the prior CBM].” The PTAB noted that the Petitioner had notice of the potential problems with the Vazvan paper at least as early as the Patent Owner’s Preliminary Response in the original CBM. The PTAB also noted that the Petitioner actually obtained the declaration from the Finnish librarian on December 17, 2014, which was before the institution decision in the original CBM and was almost six months prior to the filing of the subsequent CBM petition, but was never submitted it in the original CBM. Based on this, the PTAB determined that the petitioner was estopped under 35 U.S.C. § 325(e)(1) because “nothing prevented Petitioner from obtaining the information [regarding] Vazvan for its earlier petition.”

In sum, because there was nothing that prevented the Petitioner from finding the Orlen patent or from obtaining the information relative to the public accessibility of Vazvan in the earlier petition, the PTAB determined that the Petitioner did not show “that it reasonably could not have raised the obviousness grounds presented in the Petition based on Vazvan and Orlen in its earlier petition.” Consequently, the PTAB held that the Petitioner was estopped from requesting or maintaining a CBM proceeding on the grounds asserted in the second petition, and denied institution of the second CBM review.

This pair of CBM cases goes to show that the estoppel provisions of 35 U.S.C. § 325(e)(1) can be broadly applied to prevent subsequent CBMs, as well as IPRs and PGRs (see prior PTAB Watch posts here), from being initiated to present evidence that reasonably could have been obtained by the petitioner, even though it was not actually in the possession of the petitioner at the time an earlier petition was filed. So, these cases are another reminder to have all your ducks in a row before filing that first petition, because there is a good chance you will not be able to get later-identified evidence considered in a subsequent petition.