What Petitioners and Patent Owners Need to Know About the Scope of IPR Estoppel

By Jennifer Bush
March 6, 2017

Judge Sue L. Robinson of the U.S. District Court for the District of Delaware recently identified a logical fallacy in the “statutory estoppel” jurisprudence with respect to 35 U.S.C. § 315(e)(1).

According to the statute, a petitioner of an IPR that results in a final decision will be estopped from asserting invalidity in a civil action based on “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2).

In the recent case of Intellectual Ventures v. Toshiba, Judge Robinson noted that “the Federal Circuit has construed the language quite literally” in the use of the word “during.” The term is spelled out as “any ground that the petitioner raised or reasonable could have raised during that inter partes review” in § 315(e)(1). The judge noted that while extending the logic of non-instituted grounds as not being able to be raised “during” an IPR proceeding to prior art references that were never presented to the Patent Trial and Appeal Board at all “confounds the very nature of this parallel administrative proceeding, the court cannot divine a way around the Federal Circuit’s interpretation in Shaw.” Thus, she did not estop Toshiba from presenting the grounds never presented to the PTAB in a pair of orders in December and January, and heavily implied that the Federal Circuit should weigh in to clarify the issue.

The rationale for excluding non-instituted grounds from estoppel in litigation is that the non-instituted grounds were present only in the “preliminary proceeding” (the IPR petition), but did not become part of the “proceeding” (the instituted IPR) — to borrow the terms from Apotex — and “[a]ny claim or issue not included in the authorization for review is not part of the review” (77 Fed. Reg. 48,680, 48,689 (Aug. 14, 2012)). Apotex held that non-instituted grounds were not those that “reasonably could have been raised” because once denied they were prevented from being raised during the trial.

If grounds not included in the authorization for review are not part of the review, one must ask how prior art references never presented to the PTAB at all could qualify as those that a petitioner “reasonably could have raised during [the] inter partes review” under § 315(e)(1)?

One rationale inconsistently interprets “during” as post-institution for application to non-instituted grounds (excluded because not “during” the IPR), but as pre-institution for grounds that were not asserted but “could have been” included in the petition (a pre-institution “preliminary proceeding”). Alternatively, one could follow a different rationale, that the ground “could have been raised” in a hypothetical petition (1) in which the petitioner asserted a ground including the prior art reference(s) never presented to the PTAB, and (2) based on which references the PTAB hypothetically instituted an IPR. Both of these rationales are illogical.

This issue is one to watch for petitioners and patent owners alike. If petitioners are only estopped from raising those grounds that were actually raised, the scope of estoppel is very narrow and more accused infringers will want to file IPRs. However, if “reasonably could have raised” means some broader pool of art, the estoppel could be much broader and IPRs less favorable to petitioners as a result.

The Author

Jennifer Bush

Jennifer Bush is an Associate of Intellectual Property with Fenwick & West. She focuses her practice on prosecuting patent applications in a wide range of technical fields, including computer software, Internet technologies, RFID, and business methods. Jennifer also has patent prosecution experience with life sciences and medical devices. Her practice also involves intellectual property strategy and counseling, as well as inter partes reviews, patent appeals and reexaminations. Jennifer has analyzed intellectual property issues for numerous due diligence and litigation matters.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 1 Comment comments.

  1. Eric Berend March 7, 2017 6:24 am

    What a farce, to inventors already defrauded of our Constitutional protections in many ways; the legislative equivalent of collateral estoppel, shall not be applied, when it would redound to the normal benefit of an inventor or patentee; and, even in defiance of its original purpose of judicial economy.

    Once more, confusion created in just such a manner, works to promulgate arbitrary fiat for the benefit of intellectual property pirates. As an inventor, I find this rather juvenile ploy of ‘hide the salami’ in supposed due process, to be deplorable and not worthy of my respect – or that of any other inventor, either.

    When the fruits of years of legal training and experience, across such a powerful swath of the legal profession – and the judges, too – is placed at the behest of corporate raiders and pirates – and, without regard to anything, but how much can be plundered from inventors’ properties; and furthermore, the response of the public commons, is to ignorantly cheer the resulting economic destruction on; then, from the standpoint of a committed inventor of integrity, the vast majority of you are not only NOT worthy of respect; but rather, are instead, deserving of contempt; at this point.

    We, the “ignorant”, “naive” inventors, full of so-called “hubris”, should dare to question the condescension with which we are treated, even by a substantial portion of patent attorneys and practitioners – we should never question the critical failures of the legislators, the judges, the “inventions development” companies, or anyone else: just shut up and do as we’re told; outside of our invention process?? Is that it? Because, I really do not think you ‘legal eagles’ have clear recognized, that you are losing a whole generation of inventors; who in the future, will not readily trust your precious patent system or the many representations that we’re expected to take, on professional good faith.