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«2012 PATENTLY-O PATENT LAW JOURNAL Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint1 By Robert L. ...»

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Maintaining Post-Grant Review Estoppel

in the America Invents Act:

A Call for Legislative Restraint1

By Robert L. Stoll2


The Leahy-Smith America Invents Act (“AIA”) created a new “post-grant review” procedure within

the U.S. Patent & Trademark Office (“USPTO”) allowing a petitioner to challenge the validity of one

or more claims of an issued U.S. patent in an adversarial review proceeding before the expert agency, as an efficient, low-cost alternative to district court litigation. To ensure that the petitioner does not abuse this procedure by withholding evidence from the USPTO to raise in a later litigation, the AIA contains an important “estoppel” provision that precludes the petitioner, its real party in interest, or privy from later challenging the same patent claim, either in the USPTO or in civil litigation, on any ground that the petitioner raised or “reasonably could have raised” during the post-grant review. Critics of this provision seek to strike reasonably-could-have-raised estoppel as applied to subsequent civil litigation. This position is mistaken, because limiting the estoppel only to issues actually raised in the post-grant review would encourage petitioner gamesmanship to the detriment of (i) the courts, whose busy dockets will be burdened with more complex and time- consuming validity questions that the petitioner reasonably could and should have raised in the post-grant review, (ii) the USPTO, whose post-grant review decisions will lose their finality with respect to the same petitioner vis-à-vis a later court challenge, and (iii) the patent owner, who will be forced to defend the validity of the same patent claim against the same petitioner in piecemeal proceedings rather than in a single forum. Post-grant review estoppel, as originally enacted, should be maintained for these and other reasons discussed in this Article.

Cite as Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for 1 Legislative Restraint, 2012 Patently-O Patent Law Review 1.

Robert L. Stoll is a partner at Drinker Biddle & Reath LLP. Most recently, he served as Commissioner for 2 Patents at the U.S. Patent & Trademark Office from 2009 to 2012.

Disclaimer: The views in this article are those of the author, and do not necessarily represent the views of Drinker Biddle & Reath LLP or its clients. The author received no compensation in connection with this article. The author would like to extend thanks to Intellectual Ventures for research support during the drafting of this article.

Stoll PGR Estoppel 2012 Patently-O Patent L.J. 1 Table of Contents I.

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The AIA creates a new administrative trial proceeding within the USPTO, termed “post-grant review.”3 Intended by Congress to be a “quick and cost effective alternative[] to litigation,”4 post-grant review allows a third-party petitioner to challenge the validity of one or more claims in an issued U.S. patent on any ground under 35 U.S.C. § 282(b)(2) or (3) (i.e., novelty, obviousness, written description, enablement, indefiniteness, claim broadening).5 These are the same invalidity grounds that an accused infringer can assert as a defense in litigation.6 A post-grant review must be brought within nine months of the grant of the patent or issuance of a reissue patent.7 Once instituted, the post-grant review is conducted before a panel of three administrative patent judges of the USPTO’s Patent Trial and Appeal Board (“Board”). The Board must issue a final written decision with respect to the patentability of any claim challenged by the petitioner within one year of the institution of the post-grant review, which period can be extended by six months for good cause.8 Nevertheless, parties may agree to settle the post-grant review before the merits of the proceeding have been decided, in which case the USPTO must terminate the proceeding as to that petitioner.9 Post-grant review is only available against patents with an effective filing date on or after March 16, 2013, which are generally those that will be subject to first-inventor-to-file provisions of the AIA.10 The AIA also phases out inter partes reexamination, a USPTO patent revocation Leahy-Smith America Invents Act, Pub. L. No. 112-29, sec. 6(d) (2011).

3 H.R. REP. NO. 112-98, pt. 1, at 48 (2011).

4 Leahy-Smith America Invents Act, sec. 6(d), § 321(b) (permitting “any ground that could be 5 raised under paragraph (2) or (3) of section 282(b)” of U.S. Code).

See 35 U.S.C. § 282(b) (providing that invalidity under paragraphs (2) and (3) “shall be 6 defenses in any action involving the validity or infringement of a patent”).

Leahy-Smith America Invents Act, sec. 6(d), § 321(c).

7 Id., sec. 6(d), § 326(a)(11).

8 Id., sec. 6(d), § 327. Moreover, “[i]f no petitioner remains in the post-grant review, the 9 Office may terminate the post-grant review or proceed to a final written decision under section 328(a).” Id. In addition, because estoppel, discuss infra notes 20-21, applies only to a final written decision of the Board, a termination pursuant to a settlement would not trigger an estoppel. See id. (“If the post-grant review is terminated with respect to a petitioner under this section [§ 327], no estoppel under section 325(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that post-grant review.”).

Id., sec. 6(f) (applying “only to patents described in section 3(n)(1)”); id. sec. 3(n)(1) 10 (taking effect 18 months after enactment of the AIA).

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procedure that has existed since 1999,11 and replaces it with a proceeding similar to post-grant review called “inter partes review.”12 A third-party petitioner may request inter partes review of one or more claims in an issued U.S. patent, beginning nine months after the patent issues or reissues, or after the conclusion of any postgrant review, whichever occurs later.13 In contrast to post-grant review, however, the grounds for bringing an inter partes review are limited to novelty and obviousness under 35 U.S.C. §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.14 As in post-grant review, the Board must complete each inter partes review within one year (extendable for good cause by six months).15 Inter partes review becomes available on September 16, 2012, and may be brought against any patent regardless of its filing date.16 In keeping with Congress’ goal of making both post-grant review and inter partes review true “alternatives to litigation” for resolving patent validity disputes,17 the AIA effectively requires a challenger to elect a single forum to present its invalidity challenge: either the USPTO or civil litigation (i.e., district court and International Trade Commission (“ITC”)). Thus, a petitioner is precluded from seeking a postgrant review or inter partes review against a patent if the petitioner or its real party in interest previously filed a civil action challenging the validity of a claim of the patent.18 Likewise, any such civil action filed by the petitioner or real party in interest will automatically be stayed if filed on or after the date the petitioner sought a post-grant review or inter partes review.19 Finally, if the petitioner files and maintains a post-grant review or inter partes review that is not ultimately terminated by a settlement agreement, then the Board’s entry of a final written decision in the review will preclude the petitioner, its real party in interest, and privies from later challenging the validity of the same patent claims—either in the USPTO or in civil litigation—on any ground that the petitioner “raised or reasonably could have raised” during the post-grant review or inter partes review.20 The latter provision, precluding re-litigation after a final Board decision, is commonly known as “estoppel” and is codified at 35 U.S.C. § 315(e) for inter partes review, and § 325(e) for post-grant review. Estoppel for both of these proceedings is American Inventors Protection Act of 1999 (“AIPA”), P.L. 106-113, sec. 4601-4608 (1999).

11 Leahy-Smith America Invents Act, sec. 6(a).

12 Id., sec. 6(a), § 311(c).

13 Id., sec. 6(a), § 311(b).

14 Id., sec. 6(a), § 316(a)(11).

15 Id., sec. 6(c)(2)(A).

16 H.R. REP. NO. 112-98, pt. 1, at 48 (2011).

17 Leahy-Smith America Invents Act, sec. 6(a), § 315(a)(1); id. sec. 6(d), § 325(a)(1).

18 Id., sec. 6(a), § 315(a)(2); id., sec. 6(d), § 325(a)(2).

19 Id., sec. 6(a), § 315(e); id., sec. 6(d), § 325(e).


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identical, applying to any ground the petitioner “raised or reasonably could have

raised.” For example, estoppel for post-grant review in 35 U.S.C. § 325(e) reads:

–  –  –

(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.— The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(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 post-grant review.21 Thus, if a petitioner elects to challenge a patent claim in a USPTO post-grant review, the petitioner must put forward all of its invalidity contentions in that proceeding, because the final decision in the post-grant review will be dispositive as to all invalidity grounds that were raised or that reasonably could have been raised in the post-grant review. This effectively means that when a petitioner elects post-grant review and a final decision is issued with respect to a patent claim, all invalidity challenges to that claim will be resolved with finality as to that petitioner, precluding raising some invalidity grounds in the post-grant review while saving other grounds for use in a civil proceeding.

B. Pre-AIA Legislative Debate Over Estoppel

A debate over the appropriate scope of estoppel resulting from USPTO proceedings has been waged since at least 1999, when Congress created inter partes reexamination and gave the proceeding an estoppel effect. As the USPTO observed, “Patentees insisted upon, and Congress legislated via the 1999 statute, that a challenger in an inter partes proceeding would be bound by its result by way of estoppel, including in subsequent litigation.”22 Congress recognized, therefore, that Id., sec. sec. 6(d), § 325(e) (emphases added).



22 (2004), available at http://www.uspto.gov/web/offices/dcom/olia/reports/reexamreport.pdf [hereinafter “USPTO Report”].

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an estoppel was a necessary element to “prevent harassment” of patent owners by third-party requesters who might otherwise file multiple, serial challenges against the same patent.23 Formerly codified at 35 U.S.C. § 315(c), inter partes

reexamination estoppel provided:

CIVIL ACTION.— A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings.24 By its express terms, the inter partes reexamination estoppel applied to any invalidity grounds that the requester “raised or could have raised.” (Note the absence of the word “reasonably” in Section 315(c).) In its 5-year report to Congress on the agency’s implementation of inter partes reexamination, the USPTO specifically commented that this estoppel provision had engendered uncertainty in that “it is not clear how extensive a prior art search must be in order to avoid the ‘could have been raised’ estoppel or to satisfy the exception that a prior art issue could not have been raised if the prior art was ‘unavailable’ to the third party.”25 The USPTO noted that the statute “leaves open whether prior art that was not discovered in a search performed by the third party will be deemed prior art that was ‘unavailable’ or ‘not known,’ or if the ‘unavailable’ standard only applies to prior art that was not published at the time the inter partes reexamination request was

H.R. REP. NO. 106-287, pt. 1, at 57 (1999) (“To prevent harassment, third-party requesters23

who participate in a reexamination proceeding are estopped from raising in a subsequent court action or reexamination any issue of patent validity that they raised or could have raised during reexamination.”). See also Wayne B. Paugh, The Betrayal of Patent Reexamination: An Alternative to Litigation, Not a Supplement, 19 FED. CIR. B.J. 177, 218 (2009) (tracing the 1999 statute’s could-have-raised estoppel to the 1992 report of the Advisory Commission on Patent Reform, established by Secretary of Commerce Robert Mosbacher, which sought to remedy the shortcomings of ex parte reexamination, including its failure “to serve as a ‘true’ alternative to litigation”) (citing THE ADVISORY COMMISSION ON PATENT LAW REFORM, A REPORT TO THE SECRETARY OF COMMERCE 117, 121-22 (1992)).

35 U.S.C. § 315(c). The AIPA also contains an uncodified estoppel that precludes the thirdparty request from later challenging in a civil action any “fact” determined in the inter partes reexamination, with an exception for any “fact determination later proved to be erroneous based on information unavailable at the time of the inter partes reexamination decision.” AIPA, sec. 4607.

USPTO Report, supra note 22, at 6.


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