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.’”
Award/Ranking
Finnegan Shortlisted for the 2024 Asian Legal Business Japan Law Awards
April 26, 2024
Award/Ranking
Finnegan Named Firm of the Year at the 2024 Managing Intellectual Property Americas Awards
April 26, 2024
Commentary
April 11, 2024
Media Mention
Women in Business Law Americas Awards 2024: Three Finnegan Attorneys Shortlisted
April 7, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.