United States: PTAB Reinforces Its Interpretation Of "Reasonably Could Have Raised" Under 35 U.S.C. § 315(e)(1) Estoppel

The Patent Trial and Appeal Board (PTAB) recently reaffirmed its interpretation of "reasonably could have raised" in applying 35 U.S.C. § 315(e)(1) estoppel. The decision provides a considered analysis of the scope of Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016) and the legislative history of the America Invents Act (AIA) related to estoppel in post-grant proceedings at the United States Patent and Trademark Office (USPTO).

Section 315(e) provides for estoppel "of a claim in a patent . . . that results in a final written decision." Two subsections estop subsequent arguments concerning that claim "on any ground that petitioner raised or reasonably could have raised during [an] inter partes review" (emphasis added) in subsequent (1) inter partes reviews, and (2) district court or § 337 proceedings before the International Trade Commission.

The PTAB's interpretation of "reasonably could have raised" can be traced to Apotex, Inc. v. Wyeth LLC, IPR2015-00873, and International Business Machines Corp. v. Intellectual Ventures II LLC, IPR2014-01465, where the PTAB looked to the legislative history of the AIA in which Sen. Kyl asserted that what a petitioner "could have raised" includes "prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover." 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011). The PTAB has consistently estopped grounds for unpatentability based upon art that was previously raised or "which a skilled searcher conducting a diligent search reasonably could have been expected to discover." For example, in Ford Motor Company v. Paice LLC & The Abell Foundation, Inc, IPR2014-00884 Paper 38, the PTAB estopped a petitioner from raising grounds based on art that had not previously been raised but had been cited in the prosecution history of the patent-at-issue and was listed on the face of the patent-at-issue. The PTAB concluded that a reasonably diligent searcher would have been expected to find these references.

In Shaw, the Federal Circuit construed the language of § 315(e) to clarify that grounds raised in a petition but not instituted by the PTAB were not estopped from being raised in the future; according to Shaw, these grounds were not raised "during the IPR" because an "IPR does not begin until it is instituted." 817 F.3d at 1300.

In Great West, the PTAB addressed a fifth petition (four IPRs and one CBM) directed to the same 10 claims of a single patent covering "aggregating, enhancing, and distributing content objects with customers over a network-based environment such as via the Internet or some other form of interactive network." IPR2016-01534 Paper 13 at 3. Despite having already succeeded in rendering nine of the 10 petitioned claims unpatentable, the petitioner sought to maintain a subsequent petition challenging the already canceled claims on different grounds and argued that there would be no harm to the patent owner. See IPR2016-01534; Paper 12 at 1-2. The PTAB was not persuaded and held that estoppel applied to all nine claims that had been addressed in the prior Final Written Decision, since the additional reference raised by the petitioner "reasonably could have [been] raised" in the prior proceeding.

The PTAB's decision in Great West provides a helpful analysis of the "reasonably could have raised" portion of § 315(e). Specifically, the PTAB addressed the petitioner's arguments that Shaw limits § 315(e) estoppel to "those grounds actually litigated in an inter partes review after the institution decision" and that, in one district court, "Shaw's reasoning . . . [was] held to apply with equal weight 'to prior art references that were never presented to the PTAB at all." IPR2016-01534; Paper 13 at 11. In rejecting these arguments, the PTAB noted that "Congress would not have included the additional words 'or reasonably could have raised' after 'raised' if Congress had desired to limit the estoppel to grounds actually raised," and that the AIA explicitly limits CBM estoppel to "any ground that the petitioner raised during that transitional proceeding." Id. at 12. Further, the PTAB determined that Shaw "held that estoppel does not apply to any ground of unpatentability that was presented in a petition, but denied institution." Importantly, the PTAB asserted that there is "a substantive distinction between a ground that a petitioner attempted to raise, but was denied a trial, and a ground that a petitioner could have raised, but elected not to raise in its previous petition or petitions. Basic principles of fairness and due process dictate that the petitioner should not be estopped in the former." Id. at 13.

Great West Casualty Company v. Intellectual Ventures II LLC, IPR2016-01534 (PTAB Feb. 15, 2017) (Paper No. 13).

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