Petitioner Estopped Where Reference Cited in Prosecution History and on Face of Patent-in-Suit Reasonably Could Have Been Raised in Prior IPR

In Ford Motor Co. v. Paice LLC, IPR2015-00787, Paper 35 (Oct. 21, 2016), the Board dismissed Ford’s inter partes review (IPR) challenge of a claim based on estoppel under 35 U.S.C. § 315(e)(1), which bars a petitioner’s subsequent proceeding challenging a claim based on a ground that the petitioner “reasonably could have raised” in a prior proceeding.

Ford’s petition challenged claims of U.S. Patent No. 7,237,634 (the ’634 patent), including a claim found unpatentable in a prior petition filed by Ford. Although Ford’s petition did not raise the same grounds of unpatentability as the prior proceeding, Ford relied on U.S. Patent No. 5,789,882 (the ’882 patent), which was cited during the prosecution that led to the ’634 patent and was listed on the face of the ’634 patent. Ford did not argue that it reasonably could not have raised the arguments based on the ’882 patent in the prior proceeding and the Board found that Ford reasonably could have raised those arguments. The Board therefore determined that Ford was estopped under 35 U.S.C. § 315(e)(1) from maintaining its challenge to the same challenged claim and dismissed Ford’s IPR petition with respect to that claim.