A petitioner in an IPR, CBM or PGR that results in a final written decision may not request or maintain a proceeding before the Office with respect to a claim addressed in the final written decision that the petitioner raised or reasonably could have raised during the review. The estoppel applies not only to petitioner, but also to the real party-in-interest or the privy of the petitioner. 35 U.S.C. §§ 315(a)(1) and 325(a)(1).
Square, Inc. v. Unwired Planet, LLC, CBM2015-00148, Paper 14 (PTAB Dec. 28, 2015). The Board denied institution under § 325(e)(1) because petitioner could have raised the newly relied-upon prior art in an earlier-filed petition. The Board stated that the issue was not whether petitioner knew about the newly relied-upon reference, but whether petitioner reasonably could have discovered the newly relied-upon reference and raised the newly asserted grounds at the time of filing the earlier petition.
International Business Machines Corp. v. Intellectual Ventures II LLC, IPR2014-01465, Paper 32 (PTAB Nov. 6, 2015). The Board determined the IPR proceeding on the basis that petitioner was estopped under 35 U.S.C. § 315(e)(1), because petitioner reasonably could have raised the ground of unpatentability in an earlier IPR proceeding. The Board agreed with patent owner that the relied-upon reference is a publication that a skilled searcher conducting a diligent search reasonably could have discovered. The Board was not persuaded by petitioner’s argument that it could not have anticipated patent owner’s argument and therefore raised the reference in the earlier IPR proceeding. The Board’s focus is on what a skilled searcher conducting a diligent search reasonably could have been expected to discover, not whether petitioner could foresee that patent owner would make certain arguments in the earlier proceeding.
Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8 (PTAB Sept. 16, 2015). A ground of unpatentability raised in an earlier petition cannot be the basis for estoppel under 35 U.S.C. § 315(e)(1) if that ground was not instituted. The estoppel provisions of 35 U.S.C. § 315(e)(1) apply only to grounds that petitioner “raised or reasonably could have raised during [the] inter partes review.” If a ground is not instituted (e.g., denied as redundant), then that ground is not raised during the IPR. That ground cannot also be one that “reasonably could have been raised during” the IPR, because once denied, the Board’s decision on institution prevents petitioner from raising that ground during the trial.
Dell Inc. v. Elecs. and Telecomms. Research Inst., IPR2015-00549, Paper 10 (PTAB Mar. 26, 2015) (representative). Institution was denied on the basis that petitioner could have raised the ground of unpatentability in a prior IPR proceeding in which petitioner received a final written decision. Although the grounds presented in the different proceedings were not the same, the Board stated that “the differences in how the references have been asserted in these proceedings have no weight on our determination of whether the grounds raised in the instant Petition could have been raised in the [earlier] IPR.” Both references relied upon by petitioner in the current proceeding were relied upon in the earlier IPR.
Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015) (precedential). Estoppel under 35 U.S.C. § 325(e)(1) is applied on a claim-by-claim basis only if a final written decision has been issued for that claim. Petitioner filed a first petition challenging all the claims of the patent, but the Board denied institution for several claims. Petitioner then filed a second petition for the claims that were denied review. The Board instituted a second trial for the claims that were denied review in the first trial. After institution of the second trial, the Board issued a final written decision in the first trial. Patent owner argued that petitioner was estopped from maintaining the challenge to the claims in the second trial because petitioner had challenged those claims in the first petition. The Board determined that the final decision in the first trial did not trigger estoppel for the claims challenged in the second trial, because the final decision did not address the non-instituted claims.
Apple Inc. v. Smartflash LLC, CBM2015-00016, Paper 50 (PTAB Nov. 4, 2015). In a previous CBM proceeding, the Board issued a final written decision determining that claim 1 is unpatentable under 35 U.S.C. § 103. In the present CBM proceeding, petitioner challenged claim 1 under 35 U.S.C. § 101. In view of the Board’s prior determination that claim 1 is unpatentable under § 103, the Board determined that petitioner is estopped under §325(e)(1) from maintaining its challenge of claim 1 in the current CBM proceeding. The Board disagreed with petitioner’s argument that it could not reasonably have raised the § 101 challenge in its earlier petition because the Supreme Court had not issued its Alice decision at the time the previous petition was filed. § 325(e)(1) estops petitioner from filing or maintaining a proceeding before the Office with respect to the claims at issue on any ground that petitioner raised or reasonably could have raised. This statutory provision does not make exceptions for intervening case law that merely clarifies jurisprudence. Moreover, although Alice was not decided, the Supreme Court had already decided Bilski and Mayo on which Alice relied, and a number of Federal Circuit cases had already issued finding computer-based method claims invalid under § 101.
Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc., IPR2014-00884, Paper 38 (PTAB Dec. 10, 2015). Petitioner was estopped from challenging two claims in the current IPR proceeding because of prior art it was aware of, and could have raised, in prior IPR proceedings challenging the same two claims. What a petitioner “reasonably could have raised” includes prior art that a skilled advocate would have been expected to discover and proffer in the course of conducting due diligence on the patent at issue. Some of the prior art relied upon by petitioner was cited during prosecution of the challenged patent. As such, petitioner was on notice of those references as potential prior art before it filed its petitions. In addition, petitioner asserted the other prior art reference in another proceeding, so it was aware of that prior art.
Adama Makhteshim Ltd. v. Finchimica S.P.A., IPR2016-00577, Paper 7 (PTAB May 24, 2016). The Board denied institution of two challenged grounds, determining that petitioner was estopped under 37 C.F.R. § 41.127(a) as to those two grounds. A 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 Office after the judgment that is inconsistent with that party’s failure to move. Therefore, if a losing party in an interference filed a motion that was denied during the interference, that party is estopped from seeking the relief it sought in the denied motion in another proceeding before the office. Because petitioner did not raise the issue of patentability of the challenged claims over an asserted reference during the interference even though petitioner could have raised the issue, petitioner is estopped under § 41.127(a) from raising that patentability issue. The Board denied a second challenge because it was fully considered by the Board during the interference proceeding after the petition was filed, and therefore, petitioner is estopped from presenting that challenge under § 41.127(a).
Kofax, Inc. v. Uniloc USA, Inc., IPR2015-01207, Paper 22 (PTAB June 2, 2016). The Board granted patent owner’s motion to terminate the IPR proceeding. The Board determined that petitioner was estopped under 35 U.S.C. § 315(e)(1) from maintaining the proceeding because petitioner reasonably could have raised the grounds of challenge in an earlier IPR proceeding for which a final written decision was issued as to all claims of the challenged patent. The Board determined that petitioner was aware of the grounds at the time of filing the earlier proceeding, and petitioner had an opportunity to raise the grounds in the earlier proceeding within one month of institution of the earlier proceeding by requesting joinder with the earlier proceeding. The Board noted that petitioner unsuccessfully sought CBM review for the same grounds on the same day the earlier IPR proceeding was filed, and therefore, petitioner was aware of the asserted grounds. The Board determined that it was not unreasonable for petitioner to have filed both CBM and IPR petitions on the same day, and sought joinder with the other IPR proceeding in case the petition for CBM review was unsuccessful.
Praxair Distribution, Inc. v. Ino Therapeutics LLC, IPR2016-00781, Paper 10 (PTAB Aug. 25, 2016). The Board denied institution of a second petition filed against the challenged patent because petitioner had received a final written decision in response to a first petition challenging all the claims of the patent. Petitioner newly asserted two references in the second petition, and argued that it was not aware of the newly-asserted references despite conducting diligent searches of the prior art. The Board determined that petitioner’s evidence did not demonstrate that petitioner engaged a skilled searcher who conducted a diligent search, and therefore held that petitioner reasonably could have raised the grounds in the earlier petition. The Board also determined that petitioner’s foreign subsidiary, who was a named petitioner in the second proceeding, was estopped because the foreign subsidiary is a real party-in-interest and privy of the petitioner in the first proceeding.