Estoppel

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Update (Jan. 13, 2017): The Delaware district court issued a short order on Jan. 11, 2017, maintaining the court’s earlier decision discussed in the post below.

An AIA trial is a relatively-inexpensive, partial substitute for challenging the validity of a patent. Yet, prospective AIA trial petitioners routinely struggle with the potential estoppel effect of not raising prior art before the Patent Trial and Appeal Board. Petitioners concerned about that issue may be encouraged by a recent Delaware district court decision interpreting the statutory estoppel provision and a 2016 Federal Circuit decision not to prevent an AIA trial petitioner from pursuing in court an invalidity argument based on prior art that the petitioner did not raise—but one might have thought reasonably could have raised—during the concluded AIA trial of the same patent-in-suit. The decision appears to render null an important phrase in that statutory provision. Intellectual Ventures I LLC v. Toshiba Corp., Civil Action No. 13-453, Slip Op. (DN 559) at 25–27 (D. Del. Dec. 19, 2016) (Memorandum Opinion).
Continue Reading District Court Interprets the IPR Estoppel Provision Narrowly

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In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court recognized that a “district court may find a patent claim to be valid, and the agency may later cancel that claim in its own review.”  The Court also recognized that because of the different evidentiary burdens in court versus before the agency—the Patent Office—“the possibility of inconsistent results is inherent to Congress’[s] regulatory design.” Is that inconsistency sensible? As good a case as any to consider that question involves a global pharmaceutical company, one of its top-selling drug products, and a patent it owns that covers the administration of that drug product.
Continue Reading The Possibility of Inconsistent Results Inherent to Congress’s Design of AIA Trial Reviews

Obstruct_Don't StopA judgment in an interference disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Patent Office after the judgment that is inconsistent with that party’s failure to move. 37 C.F.R. § 41.127. This is known as “interference estoppel,” and was recently applied by the PTAB in partially denying an IPR petition. See Adama Makhteshim Ltd. v. Finchimica S.p.A., IPR2016-00577 (PTAB May 24, 2016) (order partially instituting IPR). The decision is important because it is a rare example of the PTAB’s consideration and application of interference estoppel to other Patent Office proceedings, including AIA trials.
Continue Reading PTAB Applies Interference Estoppel to Deny IPR Grounds

Child thinking with Pros and Cons on a blackboard concept for choice, for and against, confusion, inspiration and solution

The Federal Circuit recently confirmed the Board’s interpretation that § 315(e) estoppel does not take effect with respect to prior art that the Board declines to address as redundant. In two recent cases, Shaw Industries Group v. Automated Creel Sys., Nos. 15-1116, 15-1119, __ F.3d __, at*6-9 (Fed. Cir. Mar. 23, 2016) and HP, Inc. v. MPHJ Tech. Invs., No. 2015-1427, __ F.3d __, at *13 (Fed. Cir. Apr. 5, 2016) the court held that “the noninstituted grounds do not become a part of the IPR” and, thus, estoppel does not apply to those grounds in a subsequent court or Board proceeding.Continue Reading Without Estoppel, Are Redundant Grounds Now a Petitioner’s Friend?

Apple 2Six 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).
Continue Reading Estoppel Applied in Second CBM to Later-Obtained Patent and Evidence

Frustrated ReasoningThe PTAB recently issued an order applying the estoppel provision of the AIA (35 U.S.C. § 325(e)(1)) to dismiss a petitioner from covered business method (CBM) patent review proceedings a few days before a consolidated final hearing. Apple Inc. v. Smartflash LLC, CBM2015-00015, Paper 49 (PTAB Nov. 4, 2015) (common order involving CBM2015-00016 and CBM2015-00018). The order is significant because it offers guidance on how the PTAB interprets this provision and applies it to decide whether a petitioner “reasonably could have raised” a patentability challenge clarified by a Supreme Court decision that was not available during an earlier CBM proceeding involving the same parties, the same patent, and the same claims.
Continue Reading PTAB Refuses to Terminate AIA Trial Despite Applying the Estoppel Provision to Dismiss the Petitioner

Road BlockThe PTAB recently granted Celltrion’s motion to dismiss its IPRs without prejudice, after Celltrion suddenly lost its ability to rely on a key expert declaration.  Celltrion had filed IPR petitions against two patents covering use of Rituxan®, and had sought joinder with pending IPRs filed by Boehringer Ingelheim (BI) against the same patents.  Although Celltrion initially had permission to rely on testimony of BI’s expert, that permission was withdrawn after BI unilaterally requested adverse judgment in its IPRs. Left out in the cold, Celltrion requested dismissal without prejudice, to permit it to re-file its petitions with a new expert.  The PTAB granted the request. 
Continue Reading PTAB Dismisses Biosimilar Company’s IPR Petition Without Prejudice, When Petitioner Loses its Expert

The Patent Trial and Appeal Board (PTAB) is granting inter partes review (IPR) petitions at a 70% clip.  Imagine the surprisstamp denied with red text on whitee, then, when on a single day, September 16, 2015, petitioners went an incredible 0 for 5—the PTAB denied five petitions for IPR and granted none!  It seemed like a statistical improbability.  Maybe a signal that the tides have turned for patent challengers? 
Continue Reading PTAB Drops the Hammer on Petitioners: Five IPR Petitions Denied on the Same Day

Obstruct_Don't StopThe PTAB recently denied institution of an inter partes review (IPR) on the basis of the estoppel provision of the AIA (35 USC § 315(e)). Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8 (PTAB Sept. 16, 2015). The decision is not appealable, and is significant because it offers guidance on how the PTAB will construe this provision and offers examples of when the PTAB will and will not apply the provision to deny grounds for an IPR.
Continue Reading PTAB Applies the Estoppel Provision of the AIA to Deny an IPR Petition

Empty vintage congress hall with seats and microphones.Late June 2, the Senate Judiciary Committee released a new version of its Protecting American Talent and Entrepreneurship (PATENT) Act, S. 1137.  In response to prodding by industry groups, the bill now includes reforms directed at preventing abuse of the Patent Office’s post-grant proceedings, IPRs and PGRs, against patent owners The bill is here.
Continue Reading PTAB Review Reform in Bill Approved by Senate Committee

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.