Estoppel Halts Repeat Examination

Holding

The requester was estopped under 35 U.S.C. 315(e)(1) from requesting ex parte reexamination of claims 6-11, 14, 15, and 19 of the ‘821 patent on the grounds raised in the request due to improper certification relating to estoppel under Rule 1.510(b)(6).

Background

U.S. Patent No. 6,601,821 (“the ’821 patent”) was issued to inventor Jeffrey A. Tyler on August 5, 2003. Ex Parte Reexamination Proceeding Control No. 90/014,950, at 1. The ’821 patent is assigned to G.W. Lisk Company Inc. (“Lisk” or “patent owner”). Id.

On July 15, 2016, Lisk filed an action alleging infringement of the ’821 patent against GITS Manufacturing Company (“GITS” or “Requester”) in the U.S. District Court for the Western District of New York. Id. GITS then filed two petitions for inter partes review (IPR) of the ’821 patent. The first IPR challenged claims 1-11 (IPR 2017-02034, the “’2034 IPR”), and the second IPR challenged claims 12-22 (IPR2017-02035, the “’2035 IPR”). The Patent Trial and Appeal Board (“PTAB”) issued final written decisions in both IPRs, holding claims 1-5, 12, 13, 16-18 and 20-22 unpatentable, and these claims were subsequently cancelled. The PTAB found that GITS did not meet its burden of showing that claims 6-11, 14, 15, and 19 were unpatentable. The Federal Circuit affirmed under Rule 36. See Appeal Nos. 20-1250, -1323 and 19-1902, -1965 (Fed. Cir. April 13, 2021).

GITS then filed a request for ex parte reexamination of the ’821 patent (“request”) with the U.S. Patent and Trademark Office (the “Office”) on January 26, 2022, challenging claims 6-11, 14, 15, and 19. The Office determined that the request raised substantial new questions of patentability (“SNQs”), warranting reexamination, and ordered reexamination on February 24, 2022. Id. at 2.

Lisk then filed a petition to vacate the reexamination order, alleging that GITS was estopped by 35 U.S.C. 315(e)(1) from requesting or maintaining the reexamination proceeding.

Estoppel Provision of 35 U.S.C. 315(e)(1):

The estoppel provision of 35 U.S.C. 315(e)(1) states that a petitioner in an IPR that results in a final written decision cannot request or maintain a proceeding before the Office with respect to a particular claim, on any ground that the petitioner raised or reasonably could have raised during the IPR.

Additionally, when submitting a request for ex parte reexamination, the requester must submit a certification under Rule 1.510(b)(6) that the statutory estoppel provisions do not prohibit filing the request. The certification under Rule 1.510(b)(6) is either proper or improper, and if any part of the certification is improper, then the entire certification is improper. 90/014,950, at 3. The test for whether a certification is improper under U.S.C. 315(e)(1) is determined by the following elements:

1. Whether the third party requester of the ex parte reexamination proceeding was a petitioner in the inter partes review, or was a real party in interest or a privy of the petitioner;
2. Whether the claim(s) of the patent under inter partes review are also requested to be reexamined in the ex parte reexamination proceeding;
3. Whether the inter partes review has resulted in a final written decision pursuant to 35 U.S.C. 318(a); and
4. Whether the ground(s) raised in the ex parte reexamination proceeding are the same grounds(s) that were raised or reasonably could have been raised by the requester during the inter partes review.

Id. at 3.

If all elements are satisfied, then the certification under Rule 1.510(b)(6) is improper.

Record Shows All Elements are Satisfied

The Office found that the Record showed that all elements were satisfied. Id. at 4.

First, the third-party requestor of the ex parte reexamination was GITS, who was the petitioner in the ’2034 and the ’2035 IPRs. Secondly, the claims at issue in the ex parte reexamination, claims 6-11, 14, 15, and 19 of the ’821 patent were under review in both IPRs. Third, the ’2034 IPR and the ’2035 IPR both resulted in final written decisions. Id. at 4-5.

Regarding the fourth element, the Office concluded that the record showed that all the grounds raised in the ex parte reexamination request against claims 6-11, 14, 15 and 19 were not previously raised in the ’2034 IPR and the ’2035 IPRs. The issue in the case was whether the grounds reasonably could have been raised by the requester during the previous IPRs. (emphasis added). Id. at 5.

In the ex parte reexamination request, GIST proposed grounds of rejection based on obviousness based on three prior art references (Weigle, Heywood, and Rose) that were different from the three prior art references (Eggers, Martin, and Oleksiewicz) asserted in the ’2034 and’2035 IPRs. However, the Office determined that each of the grounds proposed by GIST were grounds that reasonably could have been raised by GIST in the ’2034 and’2035 IPRs. Id. at 6. The Office reasoned that the newly proposed prior art references were widely accessible, and a diligent searcher could have reasonably been expected to discover them. Id. at 7.

Therefore, since all four elements were satisfied, the Office found that the certification under Rule 1.510(b)(6) was improper. The Office further held that the estoppel provisions of 35 U.S.C. 315(e)(1) apply with respect to claims 6-11, 14, 15, and 19 of the ’821 patent and with respect to the grounds based on the Weigle, Heywood, and Rose references, alone or in combination. Id. at 9.

The Office granted Lisk’s petition to vacate the reexamination order, and terminated the reexamination proceeding.

Take-Aways

At the heart of all PTAB proceedings is the desire for fairness and efficiency. And it was considered an important aspect of the post-grant proceedings to include a provision to protect patent owners from repeated challenges. Therefore, when challenging a patent, a petitioner, or requestor, should bear the statutory estoppel provisions in mind and try to raise all grounds and prior art references believed to be most relevant to the patent at issue in the initial challenge.