The Patent and Appeal Board (PTAB) recently announced it would only review one of two challenges brought by Comcast Corp against a Rovi patent covering an interactive TV system, indicating that the petitions were too similar for both to be considered for review. This decision and the consideration of how courts answer questions about estoppel have given companies additional hurdles to consider when requesting review of patent claims.
Law360 indicated that companies often take a “scorched earth approach” at the PTAB, challenging the same patent claims from different directions in separate petitions. The Comcast decision seems to indicate that the Board will no longer allow companies to use redundant challenges in multiple petitions for the same claims. In an estoppel provision, the America Invents Act (AIA) prevents patent challengers from arguing that a patent is invalid in district court using the same grounds that were already raised during a review at the PTAB. It is unclear if the same estoppel would apply to the arguments made in petitions that the PTAB denies. “The answer to that is what is going to drive petitioner behavior in the future, I think,” said Jason Stach, head of the PTAB trials practice at Finnegan. “And we don’t know the answer to that.”
In the Comcast proceedings, the situation is ambiguous when the PTAB moves forward with one challenge but rejects another that has been filed at the same time on the same claims. “Some might say it’s inequitable to apply an estoppel to that [denied] art,” Stach said. “Others might say, ‘You had your shot and you didn’t explain yourself well enough on why these different challenges should have both gone forward. That’s on you and you should now be estopped.’”
