Federal Circuit: Estoppel Does Not Apply to Non-Instituted Grounds

Authored by Brian S. Mudge and Ksenia Takhistova

In a recent precedential opinion in Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc.1, the Federal Circuit decided that IPR estoppel provisions in § 315(e) will not apply to any invalidity ground that the petitioner raised in the petition but the PTAB chose to not institute for redundancy. Another precedential opinion issued less than two weeks later in HP Inc. v. MPHJ Tech. Investments, LLC2 confirmed this result.

Background:

Both cases involve an appeal from PTAB final decisions in IPR proceedings. In the first case, Shaw was once a defendant in a patent-infringement case brought by Automated Creel over its US Patent No. 7,806,360 directed to “creels” for supplying yarn and other stranded materials to a manufacturing process. Shaw filed two petitions for inter partes review of the ’360 patent claims, which were later consolidated and resulted in one final decision. The Board did not institute many grounds proposed by Shaw, denying them as redundant, including a ground from the first petition that some of the ’360 patent claims were anticipated by the Payne reference. In the final written decision, the Board invalidated some, but not all, of the ’360 patent claims based on the instituted grounds. Shaw appealed from the Board’s decision, and also petitioned for a writ of mandamus, requesting the Federal Circuit to instruct the PTO to institute IPR based on the Payne reference.

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Board Continues Development of Estoppel Caselaw

Authored by Brian S. Mudge

In three recent opinions, the Board has again ruled on the effect of statutory provisions governing estoppel under 35 U.S.C. §315(e)(1) and 35 U.S.C. §325(e)(1) following a final written decision. As shown by these decisions, the Board may, but is not required to, terminate a later proceeding after a final decision that triggers estoppel. These decisions also demonstrate that estoppel may be applied to bar not only prior art challenges, but also challenges under 35 U.S.C. §101 or §112.

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Chance at a Second Bite: No Estoppel as to Redundant Ground

Authored by Michelle Carniaux

It has been close to three years since the PTAB first exercised its discretion to decline institution of inter partes review grounds it found to be “redundant” of grounds on which it instituted trial. See CBM2012-00003, No. 7 at 2 (P.T.A.B. Oct. 25, 2012). Since then, the PTAB has routinely been exercising its discretion in this way to take into account “efficient administration of the Office, and the ability of the Office to timely complete proceedings.” See C.F.R. § 42.1(b).

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PTAB Rules on Scope of Estoppel Following Final Decision

Authored by Brian S. Mudge

In its first ruling on the scope of estoppel under 35 U.S.C. §315(e)(1) following a final IPR decision, the Board has denied institution of trial in a second IPR involving the same patent. The case, Dell, Inc. v. Electronics & Telecommunications Research Institute, IPR2015-00549 (PTAB March 26, 2015) (paper 10), involved an IPR brought in connection with U.S. patent no. 6,978,346. As a result of a final decision issued in a previously-instituted IPR involving the same patent, the PTAB determined that challenges to claims 1-3 and 5-8 of the ’346 patent were precluded under the estoppel provisions governing IPRs. In its ruling, the Board explained that the legislative history of the estoppel provisions suggests a broad interpretation of the scope of estoppel.

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IPR Estoppels in District Court: Motion to Strike Smoked by Real-World Product

Authored by Michael S.Turner

As accused infringers rush to challenge patents in trials before the Patent Trial and Appeal Board, they must consider the estoppels of 35 U.S.C. § 315(e). The estoppel statute may prevent petitioners from later raising any ground of unpatentability that was raised, or could have been raised, during the PTAB trial. If claims survive, the accused infringer may be left without prior art patents or printed publications to present in district court, and should consider other types of prior art: prior art use or sale in the United States.

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