Recent Developments in AIA Estoppel Jonathan R. Bowser February 3, - PowerPoint PPT Presentation

Recent Developments in AIA Estoppel Jonathan R. Bowser February 3, 2017

Estoppel from AIA Trials § Estoppel applies, on a claim-by-claim basis, when the PTAB issues a final written decision. 35 U.S.C. §§ 315(e), 325(e). § Estoppel applies to the petitioner, the petitioner’s RPI, and privy of the petitioner. – Estoppel at the PTAB: estopped from challenging or maintaining a challenge before the Office with respect to a claim addressed in a FWD on any ground that the petitioner raised or reasonably could have raised during the IPR. – Estoppel at District Court or ITC: estopped from asserting that a claim addressed in a FWD is invalid on any ground that the petitioner raised or reasonably could have raised during the IPR. 2

Legislative History § Senator Grassley (Feb. 28, 2011): – “[The bill] also would include a strengthened estoppel standard to prevent petitioners from raising in a subsequent challenge the same patent issues that were raised or reasonably could have been raised in a prior challenge .” § Senator Kyl (March 8, 2011): – ”The present bill also softens the could-have-raised estoppel that is applied by inter partes review against subsequent civil litigation by adding the modifier ‘reasonably.’…Adding the modifier ‘reasonably’ ensures that could-have-raised estoppel extends only to that prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discove r.” 3

Federal Circuit Treatment of Estoppel § Estoppel does not apply to grounds of challenge that are not instituted. – Shaw Indus. Grp. v. Automated Creel Sys. , 817 F.3d 1293, 1300 (Fed. Cir. 2016) (a ground of challenge that was denied institution as being “redundant” cannot be raised during an IPR because institution was denied for that ground, and therefore estoppel does not apply to the “redundant” ground). – HP Inc. v. MPHJ Technology Investments, LLC , 817 F. 3d 1339, 1347 (Fed. Cir. 2016) (estoppel does not apply to grounds of challenge that were denied institution). § Thus, estoppel does not apply to a challenge that is denied institution on the merits, or to a challenge that is denied institution under the “redundancy doctrine.” 4

PTAB’s Interpretation of “Reasonably Could Have Raised” Provision § In follow-on IPR petitions, the PTAB has interpreted the “reasonably could have raised” provision of 35 U.S.C. § 315(e)(1) as including: – prior art that was cited during prosecution of the challenged patent. Ford Motor Co. v. Paice LLC , IPR2015- 00790, Paper 34 (PTAB Nov. 4, 2016). – prior art that the petitioner relied upon in an earlier-filed petition. Kofax, Inc. v. Uniloc USA, Inc. , IPR2015-01207, Paper 22 (PTAB June 2, 2016). – prior art that a skilled searcher conducting a diligent search reasonably should be expected to discover. Praxair Distribution Inc. v. Ino Therapeutics, LLC , IPR2016-00781, Paper 10 (PTAB Aug. 25, 2016). 5

District Court Treatment of IPR Estoppel § Intellectual Ventures v. Toshiba Corp . (D. Del. Dec. 19, 2016). – Defendant was not estopped from bringing challenges based on publicly-available prior art that was not presented to the PTAB and therefore not instituted but that “could have been raised in the Inter Partes Review.” – Judge Robinson indicated that she was constrained by the reasoning in Shaw because the Federal Circuit had construed § 315(e)(2) “quite literally.” – Judge Robinson explained that “[a]lthough extending the reasoning in Shaw to any challenge based on “prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding, the court cannot divine a reasoned way around the Federal Circuit’s interpretation in Shaw .” 6

District Court Treatment of IPR Estoppel (cont’d) § Verinata Health, Inc. v. Ariosa Diagnostics, Inc. (CAND Jan. 19, 2016). – In an IPR, Ariosa asserted multiple grounds of challenge: (1) obvious over Dhallan and Binladen, (2) obvious over Shoemaker, Dhallan and Binladen, and (3) obvious over Quake and Craig. PTAB instituted (2), denied institution for (1) as “redundant,” and denied institution for (3). All claims survived IPR. Ariosa conceded it was estopped from asserting challenge (2). – Ariosa was estopped from asserting challenge (1) although (1) was denied institution. “The Court finds that defendants raised, or could have raised, [ground (1)] in the IPR proceedings, as the combination of Dhallen and Binladen is simply a subset of the instituted grounds.” Ariosa not estopped from asserting challenge (3). 7

District Court Treatment of IPR Estoppel (cont’d) § Depomed Inc. v. Purdue Pharma LP (D.N.J. Nov. 4, 2016) – PTAB instituted review of all challenged claims except for claims 11 and 12. In the FWD, the PTAB determined that all challenged claims are not unpatentable. – Relying on Shaw , the court held that Purdue was not estopped from challenging claims 11 and 12 on the basis of prior art asserted in the IPR petition. – Purdue was also not estopped from raising an on-sale bar challenge against claims 11 and 12, because IPR petitioners cannot raise such challenges in an IPR. 8

District Court Treatment of IPR Estoppel (cont’d) § Princeton Digital Image Corp. v. Konami Digital Entm’t . (D. Del. Jan. 19, 2017). – Defendant not estopped from asserting grounds of challenge that were not presented previously in the IPR. § Precision Fabrics Grp., Inc. v. Tietex Int’l, Ltd. (M.D. N.C. Nov. 21, 2016). – Defendant not estopped from raising a ground of challenge that was denied institution by the PTAB. – However, the court granted plaintiff’s motion for summary judgment of non-invalidity for the non-instituted ground of challenge presented in IPR. The court noted that while estoppel does not apply, “the PTAB’s refusal to institute an inter partes review is indicative of the weakness of TieTex’s claim of invalidity….” 9

Recap § The PTAB appears more likely to estop petitioners under the “reasonably could have raised” provision of §§ 315(e), 325(e). § At the district court level, there is an open question of whether estoppel applies to grounds of challenge that the IPR petitioner did not raise in an IPR or PGR petition. Thank you! 10