PTAB Panel Estops Petitioner Under 315(e)(1)

A panel of judges at the Patent Trial and Appeal Board (“the Board”) recently estopped a Petitioner from joining a petition for inter partes review under 35 U.S.C. § 315(e)(1). The panel’s order denying institution and joinder is notable for its interpretation of the Federal Circuit’s decision in Shaw Industries Group v. Automated Creel Systems, Inc. 817 F.3d 1293 (Fed. Cir. 2016). The panel’s interpretation is markedly different from an earlier application of that case by Judge Robinson of the U.S. District Court for the District of Delaware.

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Collateral Estoppel in an IPR

When a patent or patent family is subject to multiple validity challenges, a petitioner in an inter partes review may seek to assert collateral estoppel to preclude relitigation of issues decided in a previous proceeding. Collateral estoppel, which is also called issue preclusion, is appropriate where: “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom issue preclusion is asserted] had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994). Collateral estoppel is “premised on principles of fairness,” which leaves considerable latitude to the PTAB in deciding whether to apply the doctrine. Continue reading “Collateral Estoppel in an IPR”

PTAB’s Two Precedential Opinions and Impact of Previous Proceeding on AIA Reviews

The Patent Trial and Appeal Board (PTAB) recently designated two opinions as precedential, which are two of the only three precedential opinions in America Invents Act (AIA) reviews up to today. The precedential status means that these opinions are binding precedents that the PTAB judges must follow in the future.

The first opinion, LG Electronics Inc. v. Mondis Tech Ltd. (IPR2015-00937, Sept. 17, 2015), is related to the one-year bar date for filing an inter partes review (IPR). Based on 35 U.S.C §315(b), an IPR is barred if it is filed more than one year after a petitioner is “served with a complaint alleging infringement of the patent” (emphasis added). The question is which complaint should be the basis for the one year deadline if several complaints are served. Continue reading “PTAB’s Two Precedential Opinions and Impact of Previous Proceeding on AIA Reviews”

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