Archive for the ‘raised or reasonably could have raised’ Category

Board Guidance on its View of Petitioner Estoppel: Westlake Services v. Credit Acceptance Corp:

Tuesday, July 21st, 2015
July 21, 2015

Last week, the Board provided an opinion to offer guidance on its view of the scope of petitioner estoppel.  The Westlake Services v. Credit Acceptance Corp. decision relates to the scope of estoppel to a Petitioner following a final written decision from a first petition.  Westlake Services v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015). 

This case addresses the question of the scope of Petitioner estoppel when only part of the claims in a CBM proceeding are instituted for trial.  In short, the first petition set forth grounds to challenge the patentability of all claims of U.S. Pat. 6,950,807.  Only some claims were instituted for trial.  Later, the Petitioner filed another petition to challenge claims that were not instituted for trial in the first proceeding.  A final written decision was issued by the Board in the first proceeding finding the instituted claims unpatentable under § 101, and the Patent Owner sought to block the second petition based on petitioner estoppel under 35 U.S.C. § 325(e)(1):

The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(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 post-grant review.

The Patent Owner obtained permission to brief the Board with its reasons why the Petitioner was estopped from filing the second petition.  The Patent Owner argued that § 328(a), provides “[i]f a post-grant review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.”  In this case the Patent Owner wanted estoppel to apply to all claims to prevent Petitioner from coming back for a second bite on the claims that were not instituted for trial.  After all, the petition was trying to challenge every claim of the patent and the Board did not institute on several claims.  So the Patent Owner relied on this language to assert that the estoppel arising from the Final Written Decision applied to all claims.

Here is the Patent Owner’s logical syllogism:

A.  The Petition challenged all claims.

B.  § 328(a) provides a Final Written Decision is with respect to “any patent claim challenged by the petitioner.”

C.  Therefore, the Final Written Decision applies to all claims, even though institution was only to a subset of the claims.

D.  § 325(e) provides estoppel to all claims because the Final Written Decision is to all claims in (C) above.

E.  Accordingly, Petitioner is estopped from challenging all claims.

The Board denied the Patent Owner’s logic.  Essentially, it determined that § 328(a) and § 325(e) apply on a claim-by-claim basis, and therefore estoppel applies only to the claims instituted for trial.  The Board wanted to clarify estoppel applies only to a claim in a patent that “results in a final written decision” under § 328(a).  So the Board’s logic is different:

A.  The Petition challenged all claims.

B.  Trial was instituted to only some claims.

C.  The Final Written Decision under § 328(a) is only to the instituted claims.

D.  § 325(e) provides estoppel to “a claim in a patent” that “results in a final written decision” under § 328(a), therefore estoppel is only to the instituted claims.

E.  Accordingly, Petitioner is estopped from challenging the instituted claims.

The Board’s guidance about the scope of estoppel allows all parties to make informed decisions about how to better litigate their cases.

Comparative Study of Post Issuance Review Options

Friday, September 21st, 2012

Today I had the pleasure of co-presenting at the Midwest IP Institute on various post-issuance proceedings with Kevin Rhodes, Chief Intellectual Property Counsel and President of 3M Innovative Properties Company.  A PDF of our joint presentation is found here.

The presentation provides a comparison between IPR (inter partes review), PGR (post grant review), and CBM (covered business method) patent review.  It contrasts these proceedings to ex parte reexamination (EPX).  The goal was to present the available options for review of patents now that inter partes reexamination is no longer available.

The presentation further covered administrative trials in the PTAB.  A hypothetical was used to demonstrate the use of litigation, IPR, PGR, CMB, and EPX depending on strength of 35 USC § 101 and § 112 arguments as opposed to 35 USC § 102 and § 103 prior art invalidity arguments.  Different scenarios were used to demonstrate the complexity of the analysis.

My thanks to Kevin Rhodes and 3M for allowing me to post these slides.

America Invents Act: Post-Grant Procedures for Patent Challengers

Monday, September 19th, 2011

Now that the America Invents Act has become law there are several new provisions for patent challengers to consider.  For example, the Act includes:

  • preissuance submissions by third party challengers (Sec. 8 — see the last post);
  • Post-Grant Review (Sec. 6 – see slides*);
  • Inter Partes Review (Sec. 6 – see slides*);
  • Business Method Transitional Proceedings (Sec. 18 – see slides*); and
  • Formation of the Patent Trial and Appeals Board (PTAB) (Sec. 7 – see slides*).

(*Many of the features of the last 4 bullet items on this list are discussed in my PowerPoint slides presented at the AIPLA Electronics and Computer Law Summit on August 16, 2011.)

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Strategic Use of Reexamination in view of the Patent Reform Bill

Monday, August 22nd, 2011

Last week I had the privilege of speaking on reexamination at the AIPLA Electronics and Computer Law Summit.  The title of my speech was “Strategic Use of Reexam after Patent Reform – Post-Grant Review and Inter Partes Review.”  The powerpoint presentation materials can be found here.  The materials assume that the bill currently pending before the Senate is passed substantially intact.  The speech focuses primarily on post-grant review and inter partes review.  It also touches on supplemental examination and the proposal to provide PGR-like review of “covered business methods.”  We shall see how Congress votes on the bill in September.