AIA Trial-Based Estoppel

  • BASICS: “The 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 assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2); see 35 U.S.C. § 325(e)(2) (same provision for post-grant reviews); AIA § 18(a)(1)(D) (“The petitioner in a transitional proceeding that results in a final written decision under section 328(a) of title 35, United States Code, with respect to a claim in a covered business method patent, or the petitioner’s real party in interest, may not assert, either in a civil action arising in whole or in part under section 1338 of title 28, United States Code, or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), that the claim is invalid on any ground that the petitioner raised during that transitional proceeding.”) Cf. Uniloc 2017 (aff’g no estoppel; counterpart estoppel provision applying to subsequent AIA proceedings, section 315(e)(1), applies only to claims decided in final written decision, not even to dependent claim therefrom (but language of provision differs from section 315(e)(2)).
  • Estoppel Extends To All Grounds Petitioner Reasonably Could Have Included In Petition: “Estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all grounds not stated in the petition but which reasonably could have been asserted against the claims included in the petition.” The California Institute (Fed. Cir. 02/04/22) (as corrected by Errata (Fed. Cir. 02/22/22)) (overruling Shaw; aff’g Order barring assertion of prior art grounds based on art defendant knew of when filed petition). See Ironburg (Fed. Cir. 04/03/23) (aff’g estoppel as to grounds asserted in IPR petition but not Instituted, where petitioner did not seek remand ivo SAS); Intuitive Surgical (Fed. Cir. 02/11/22) (aff’g estoppel against maintaining third of three simultaneously filed IPR petitions challenging same claims with three different combinations of prior art where first two reached FWD against petitioner before third reached FWD); Click-to-Call (Fed. Cir. 08/17/22) (where IPR petition challenged other claims with reference A but an asserted claim with only reference B, Board instituted only reference A challenges, and petitioner did not seek remand post SAS for Board to institute on all grounds, petitioner barred as matter of law asserting anticipation of asserted claim over reference A because that challenge reasonably could have been raised in IPR as petitioner knew of reference A, even though that claim was not addressed in Final Written Decision).
  • Estoppel Extends To All Grounds Patent Owner Shows A Skilled Searcher Conducting A Diligent Search Reasonably Could Have Been Expected To Discover: “315(e)(2) estops a petitioner as to invalidity grounds a skilled searcher conducting a diligent search reasonably could have been expected to discover, as these are grounds that the petitioner ‘reasonably could have raised’ in its petition.” Ironburg (Fed. Cir. 04/03/23) (remanding for district court to apply this standard; “The inquiry into what a skilled and diligent searcher would reasonably have discovered is ultimately concerned with what the searcher of ordinary skill would find through reasonable diligence and not what an actual researcher in fact did find through whatever level of diligence she exercised.”).
  • Patent Owner Has Preponderance Burden To Show That Petitioner Could Have Raised Grounds In PTAB Proceeding: Ironburg (Fed. Cir. 04/03/23) (remanding as district court put burden on the petitioner).
  • Unclear Whether AIA Trial-Based Estoppel Arises Before Appeals Exhausted: Court has not decided when PGR-based estoppel arises, although has held that for inter partes reexamination “whose language is similar but not identical to § 325(e)(2)—estoppel rights arose when all appellate rights were exhausted.” Olaplex (Fed. Cir. 05/06/21) (non-precedential) (aff’g application of estoppel against written description and obviousness defenses); Progressive Casualty (Fed. Cir. 08/24/15) (non-precedential) (declining to apply estoppel against one CBM decision based on another CBM decision posted hour earlier; “§ 325(e)(1) does not say when a final decision begins to have estoppel effect (on the petitioner)”). See Biogen (Fed. Cir. 11/30/21) (noting w/o discussion: “In the IPR case, the Board rejected an obviousness challenge to the asserted ’514 Patent claims, which estopped Mylan from litigating obviousness issues in the trial court.”).
  • Unsettled When Estoppel Extends To Related Prior Art Products: In re DMF (Fed. Cir. 09/09/21) (non-precedential) (denying mandamus on district court decision to allow unsuccessful IPR petitioner to assert as prior art products related to publication prior art cited in IPR, where parties consented to district court standard of “whether there was a substantive difference between the physical Hatteras product relied upon by ELCO in this case and the description of the product in the 2011 Imtra catalog germane to the invalidity dispute”).
  • Different Claim Construction In Court Does Not Erase Estoppel: The possibility of a different claim construction would have been known to Congress and does defeat application of estoppel. Olaplex (Fed. Cir. 05/06/21) (non-precedential) (aff’g application of PGR-based estoppel against written description and obviousness defenses).
  • “Real Party In Interest” And “Privy” In AIA Have Expansive Common Law Meaning: “Congress intended that the term ‘real party in interest’ have its expansive common-law meaning.” “The focus of the real-party-in-interest inquiry is on the patentability of the claims challenged in the IPR petition, bearing in mind who will benefit from having those claims canceled or invalidated.” “The common law aims to protect defendants in one action from later legal actions brought by related parties who are actually entitled to relief.” “Demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” “The point is not to probe RPX’s interest (it does not need any); rather, it is to probe the extent to which Salesforce—as RPX’s client—has an interest in and will benefit from RPX’s actions, and inquire whether RPX can be said to be representing that interest after examining its relationship with Salesforce.” Applications In Internet Time (Fed. Cir. 07/09/18) (vacating PTAB FWDs for Board to reconsider, under common law principles, whether RPX time barred on account of litigation defendant being “real party in interest,” considering for example that “RPX can and does file IPRs to serve its clients’ financial interests, and that a key reason clients pay RPX is to benefit from this practice in the event they are sued by an NPE,” and evidence that “suggests that RPX may have filed the three IPR petitions, in part, to benefit Salesforce,” and other theories (e.g., apparent authority) identified in Wright & Miller treatise); Wi-Fi One (Fed. Cir. 04/18/18) (2-1) (aff’g PTAB decision of no privity of real party in interest: “The interpretation of the concepts of privity and real party in interest set forth in the PTO’s Office Trial Practice Guide and applied by the Board is consistent with general legal principles.” Implying that the petitioner must have had control over the prior district court litigation.)
  • Party Joining An Instituted IPR Petition Is Not Estopped Beyond Grounds Decided In Final Written Decision: Joined party not estopped beyond decided grounds because cannot add new grounds that were not already instituted. Network-1 Tech. (Fed. Cir. 11/20/20).
  • Final Written Decision Declining To Decide Prior Art Invalidity Due To Indefiniteness Likely Not Create Estoppel: “If the Board determines both that there is indefiniteness and that such indefiniteness renders it impossible to adjudicate the prior-art challenge on its merits, then the Board should conclude that it is impossible to reach a decision on the merits of the challenge and so state in its decision,” and in that case there is no estoppel effect. Intel (20-1828) (Fed. Cir. 12/28/21) (vacating PTAB refusal to determine patentability based on IPR petitioner argument that is no structural support for a section 112(f) claim element). Dictum: “To be clear, in cases in which the Board cannot reach a final decision as to the patentability of certain claims because it cannot ascertain the scope of those claims with reasonable certainty, the petitioner would not be estopped by 35 U.S.C. § 315(e) from challenging those claims under sections 102 or 103 in other proceedings.” Samsung (Fed. Cir. 02/04/20).

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