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