United States: PTAB Final Written Decision Estoppel

Last Updated: April 19 2016
Article by Sughrue Mion

When a Final Written Decision has been received in an America Invents Act (AIA) patent office trial, the Petitioner is estopped from "request[ing] or maintain[ing] another proceeding before the Office on any ground that the petitioner raised or reasonably could have raised" during the proceeding. This estoppel also applies to real parties in interest and privies of the Petitioner. See 35 U.S.C. §§ 315(e)(1) and 325(e)(1).

In recent decisions and orders, the PTAB has applied this estoppel to Petitioners involved in later filed patent office trials in different ways. The estoppel does not prohibit the PTAB from reaching a Final Written Decision in a subsequent patent office trial. The PTAB has the discretion to (1) allow the subsequent trial to proceed without the Petitioner's participation, (2) terminate the subsequent trial, or (3) terminate certain claims from the subsequent trial when appropriate.

Apple v. Smartflash

In Apple v. Smartflash (CBM2015-00015, 16, 18 and CBM2014-00194), the PTAB allowed subsequent patent office trials to continue without participation of the Petitioner. The PTAB had issued final written decisions in favor of the Petitioner in two earlier CBM proceedings. The PTAB found claim 1 of US 8,033,458 and claim 1 of US 8,118,221 to be unpatentable under 35 U.S.C. § 103 in view of prior art references. See CBM 2015-00015 at paper no. 29, page 2. During the first two proceedings, the Petitioner did not assert that the claims were ineligible subject matter under 35 U.S.C. § 101.

However, after the Supreme Court's Alice decision, the Petitioner decided to file subsequent CBM Petitions alleging that the claims are ineligible under 35 U.S.C. § 101. The PTAB found that the Petitioner "reasonably could have raised" the § 101 grounds during the first proceeding and therefore is estopped from challenging patentability based on the new § 101 grounds. See CBM 2015-00015 at paper no. 29, page 4. The PTAB used its discretion to maintain the later filed proceedings because the record in these proceedings had been fully developed and because the PTAB would be "making determinations in related cases involving similar issues and argument." See CBM 2015-00015 at paper no. 29, page 6. This outcome is consistent with the PTAB's practice when settlement is not reached until the late stages of the proceeding. In those trials, the PTAB dismissed the Petitioner but still issued a Final Written Decision. See CBM 2015-00015 at paper no. 29, page 6.

IBM v. Intellectual Ventures

In contrast, in IBM v. Intellectual Ventures (IPR 2014-01465), the PTAB used its discretion to terminate the later filed proceeding. A Final Written Decision in an earlier IPR proceeding held claim 1 of US 6,826,694 unpatentable. In a subsequent proceeding, the Petitioner relied on a new non-patent literature document from an IEEE symposium, Estrin 1987. The Petitioner alleged that they could not have raised Estrin 1987 during the first proceeding because their reliance on Estrin was based on arguments raised by the Patent Owner in the first proceeding's Patent Owner Preliminary Response. The Petitioner's alleged that arguments in the Patent Owner Preliminary Response "opened the door" to the Petitioner asserting Estrin 1987. See IPR 2014-01465, paper no. 32 at page 4. However, the Petitioner acknowledged that "a skilled searcher conducting a diligent search reasonably could have been expected to discover" the Estrin reference. The PTAB held that estoppel applied, the proper inquiry being whether a skilled searcher "reasonably could have been expected to discover" the prior reference, "not whether Petitioner could foresee that Patent Owner would make certain arguments in the earlier proceeding," as alleged by the Petitioner. The PTAB determined that "the best means of securing the just, speedy, and inexpensive resolution of this proceeding is to terminate this proceeding." See IPR 2014-01465, paper no. 32 at page 9.

Ford v. Pace

In Ford v. Pace (IPR2014-00884), the PTAB used its discretion to dismiss the Petitioner's challenge against certain claims in a subsequent IPR proceeding, while the proceeding went forward to determine patentability of other claims. Final Written Decisions in two earlier IPR proceedings held claims 21 and 23 unpatentable over a first set of prior art references. In the subsequent IPR proceeding, the Petitioner challenged other claims of the same patent and also challenged the same claims again, relying on new grounds based on different prior references, Caraceni and Tabata '201 and Tabata '541. The PTAB found that the Petitioner "reasonably could have raised" the new grounds because "a skilled advocate would have been expected to discover and proffer [the different prior art] in the course of conducting due diligence on the patent at issue." See IPR2014-00884 at paper no. 38, page 14. And the PTAB found that the Petitioner either must have known or should have known about these references. The Petitioner had relied on Caraceni in a related IPR Petition against a different patent that had been filed on the same day as the earlier IPR Petition, and the Tabata references were listed on the face of the patent. See IPR2014-00884 at paper no. 38, page 14.

Take away

In each of the PTAB trials discussed above, the Petitioner was estopped from participating in a subsequent patent office trial after the Petitioner had received a favorable Final Written Decision in the earlier trial. Petitioners should carefully consider the potential effect of final written decision estoppel when deciding whether or not to file a subsequent IPR, PGR, or CBM Petition.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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