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In a decision from the Patent Trial and Appeal Board ("the
Board") issued last week, the Board confirmed that the
"enhanced estoppel" provision of 35 U.S.C. §
315(e)(1) applies to co-pending inter partes review
("IPR") proceedings when a final written decision issues
in a first IPR. The panel flatly rejected a Petitioner's
attempt to apply the Federal Circuit's decision in Shaw
Indus. Group, Inc. v. Automated Creel Sys., Inc., 817 F.3d
1293 (Fed. Cir. 2016) to those circumstances. The Board emphasized
that estoppel does not apply only to grounds in a petition that
were considered but not instituted—a circumstance that no
longer occurs post-SAS Inst., Inc. v. Iancu, 138 S.Ct.
1348 (2018)—and concluded that to hold otherwise would
incorrectly render superfluous the "reasonably could have
raised" language of § 315(e)(1).
The Petitioners filed a total of four petitions requesting
inter partes review of U.S. Patent No. 9,606,907
("the '907 Patent"). On December 22, 2017, Petitioner
filed two petitions based upon the same prior art reference,
Ellsberry, which the Board consolidated. Five days later,
Petitioners filed two additional petitions based upon a combination
of two new references, Halbert and Amidi, which the Board
consolidated separately from the Ellsberry petitions. The
Petitioners did not seek to consolidate all of the petitions or to
coordinate the case schedules. On June 27, 2019, the Board issued a
final written decision in the Ellsberry inter partes
review, concluding that all but two dependent claims of the
'907 Patent are unpatentable. The patent owner then moved to
terminate the Halbert-Amidi inter partes review based upon
estoppel under 35 U.S.C. § 315(e)(1).
35 U.S.C. § 315(e)(1) states in pertinent part that:
[t]he petitioner in an inter partes review of a claim in a
patent under this chapter that results in a final written decision
under section 318(a), or the real party in interest or privy of the
petitioner, may not request or maintain a proceeding before the
Office with respect to that claim on any ground that the petitioner
raised or reasonably could have raised during that inter partes
review.
The Board answered the question whether the later-filed (and
still pending) grounds based upon the combination of Halbert and
Amidi "reasonably could have [been] raised" during the
Ellsberry IPR: yes.
Petitioners argued that, based upon the reasoning in
Shaw, the phrase "during that inter partes
review" refers only to grounds actually raised during
the prior completed proceedings. The Board rejected this argument
as counter to Congress' inclusion of the words "or
reasonably could have raised" after "raised," and
concluded that such an interpretation would effectively render 35
U.S.C. § 315(e)(1) meaningless. Moreover, following the
Supreme Court's decision in SAS, the "factual situation
underlying the holding in Shaw—i.e., some but not
all grounds being instituted—likely will not arise in
inter partes reviews post-SAS[.]" Instead, the Board
restated the accepted notion that "reasonably could have been
raised" encompasses prior art other than the prior art
instituted if a "skilled searcher conducting a diligent search
reasonably could have been expected to discover" that prior
art. The Board also rejected Petitioners' argument that they
could not have raised the precluded grounds because of, among other
things, the page limit on petitions, noting that had the
Petitioners filed the IPRs on the same day estoppel would not have
applied. It is therefore not relevant whether Petitioner could have
fit all the asserted grounds in one petition, as long as the
grounds could have been raised in one or more additional petitions
filed on the same day.
For these reasons, the Board terminated the Halbert-Amidi
proceeding on a discretionary basis mere days before the final
written decision was due. This is an important reminder that
Petitioners need to be mindful of this potential result when filing
serial IPR petitions for strategic purposes. As the Board stated,
where "a petitioner makes an affirmative choice to avail
itself of inter partes review only on certain
grounds," that choice "comes with
consequences"—here in the form of section 315(e)(1)
estoppel.
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