June 23, 2017Newsletter

This Week at the Board - June 23, 2017

PTAB Grants Permission to File Motion to Stay Reissue Pending IPR

In IPR2017-00190, the Board granted permission to petitioner to file a motion to stay the patent owner's pending reissue application in view of the pending inter partes review. Because the claims at issue in the reissue application were similar to the claims at issue in the inter partes review, the petitioner argued that there could be inconsistent outcomes, a duplication of effort by the Office, and unnecessary effort by the parties if the two proceedings went forward in parallel. The Board granted authorization despite patent owner’s arguments that many of the dependent claims were patentably distinct from the claims at issue in the inter partes review and thus would not implicate a possible inconsistent outcome and prejudice in the delay.

A link to the PTAB's Decision is provided here.

PTAB Grants Permission to File Motion to Disqualify Petitioner’s Expert

In IPR2017-01267, the Board granted the patent owner permission to file a motion to disqualify the petitioner’s expert, based on assertions by the patent owner that the expert was privy to patent owner’s confidential information during his involvement in a prior ITC proceeding. The petitioner asserted that the expert was a non-testifying consultant, and his work was limited to searching for prior art during the ITC proceeding. The patent owner, however, asserted that the expert had access to patent owner’s confidential information and could rely on that information to patent owner’s detriment in the inter partes review. Given the fact-specific nature of the inquiry, the Board granted the authorization to file the motion, noting that the patent owner must support its motion with specific evidence and applicable legal authority.

A link to the PTAB's Decision is provided here.

Federal Circuit Clarifies §325(e)(1) Estoppel

In Fed. Cir. 2016-2001, the Federal Circuit found that §325(e)(1) estoppel does not apply in a subsequent proceeding to claims upon which the Board declined to institute review. Accordingly, the petitioner was not estopped from challenging claims that were not the subject of a final written decision. Additionally, the Federal Circuit found that §325(e)(1) estoppel findings by the Board are not institution issues, and thus are not precluded from appellate review. In particular, the Federal Circuit noted that “§325(e)(1) does not refer to ‘institution’ decisions and in fact is not limited to institution decisions” and that “estoppel governs at any stage of a subsequent proceeding before the PTO – its application is not limited to the institution stage.” In a partial dissent, Judge Mayer argued that just as the Federal Circuit had no jurisdiction to review the Board’s application of assignor estoppel, the Federal Circuit should also be precluded from reviewing the Board’s application of petitioner-specific estoppel.” Judge Mayer argued that review of §325(e)(1) estoppel is an “unwarranted jurisdictional extension, inconsistent with the broad and unequivocal statutory bar on review of institution decisions.”  

A link to the Federal Circuit Decision is provided here.

PTAB Denies Petitioner’s Motion to Submit Supplement Information

In IPR2017-00028, the Board denied the petitioner’s motion to submit supplemental information in accordance with 37 C.F.R. § 42.123(a). The Board noted that the request was timely and that the information appeared to be relevant to a claim upon which trial was instituted. The Board found, however, that the supplemental information was being used merely to bolster deficiencies in the petition raised by the patent owner preliminary response, and that 37 C.F.R. § 42.123(a) was not intended to allow petitioners to take advantage of a “wait-and-see” approach. Additionally, the Board noted that the petitioner had not explained sufficiently why the supplemental information could not have been presented with the original petition.

A link to the PTAB's Decision is provided here.

PTAB Grants Motion for Joinder Despite Petitioner Missing the One-Month Deadline

In IPR2017-00925 and IPR2017-00926, the patent owner argued that petitioner’s motion for joinder should be denied as untimely, since it was filed later than one month after the institution date of the inter partes review for which joinder was requested. Under 37 C.F.R. § 42.5(b), however, the Board exercised its discretion to waive or suspend a requirement of part 42 of the Board’s rules, noting that Petitioner’s parent company filed the petition within one month of the institution date, and then petitioner re-filed shortly thereafter to include both entities as real parties-in-interest. Petitioner’s asserted grounds and arguments were identical to those already in issue, and would thus require no change to the trial schedule and impose no burden on the existing parties.

A link to the PTAB's Decision is provided here.

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