Estoppel Versus Discretion: How is the PTAB Deciding Multiple Petitions Against the Same Patent?

22 September 2015 PTAB Trial Insights Blog

The PTAB has denied petitions filed by the same petitioner against the same claims, even where the subsequent petition relied upon completely different prior art (IPR2014-00506), reasoning that a petitioner should not hold back its best references for a subsequent attempt.  But what happens when the same petitioner files a new petition (after a first petition is denied) against a different claim or claims of the same patent based on the same or similar prior art?  According to the decision in IPR2015-00881, the PTAB may decide to institute if it finds a reasonable likelihood that one or more of the newly challenged claims is unpatentable.  Understanding the different outcomes of PTAB decisions on multiple petitions against the same patent requires an examination of the underlying statute.

Estoppel Versus PTAB Discretion To Deny Based On Prior Proceedings

Statutory estoppel under section 315 (section 315(e) is the estoppel provision for IPR, while section 325(e) relates to estoppel for PGR) only prevents unsuccessful petitioners where the PTAB already instituted as to a particular claim and issued a final written decision as to that claim upholding patentability (emphasis supplied):

“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 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 inter partes review.”

By contrast, section 325(d) broadly gives the PTAB discretion to deny any petition in a situation where “substantially the same prior art or arguments previously were presented to the Office” in another proceeding.  This provision is broader than 315 because it is not party-specific, it is not claim-specific, and it is not proceeding-specific.  At the same time it is discretionary because the PTAB “may” choose to apply it or not apply it.

PTAB Refuses To Exercise Discretion To Deny

In IPR2015-00881, the PTAB declined to use its discretion to deny the petition, even though it involved the same prior art except for one reference.  The primary reason appears to be the focus on a different claim in the subsequent petition, although the decision also cites the existence of a new reference.  As noted above, estoppel would not apply here because the earlier petition did not result in a final written decision, since it was denied.  Understanding the interplay of estoppel and PTAB discretion to deny under 325(d) based on prior proceedings is critical for both petitioners and patent owners who are confronting situations with multiple petitions.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services