Tagged with Inter Partes Review (IPR)

Concerns Raised Regarding PTAB Rules on Joinder and Expanded Panels

Author: Paula E. Miller
Editor: Jason E. Stach

In Nidec Motor Co. v. Zhongshan Broad Ocean Motor Co., No. 16-2321 (Fed. Cir. Aug. 22, 2017), the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s) decision that claims directed to a low-noise HVAC system were invalid as obvious.  In doing so, Judges Dyk and Wallach issued a concurring opinion calling into question the PTAB’s view that the joinder provision of 35 U.S.C. § 315(c) allows a petitioner to add time-barred new issues to its own timely-filed inter partes review.  The judges also questioned whether the PTAB may properly achieve uniformity in its decisions by expanding its panels, adding judges to the panels in the hope that those judges will tip the balance toward a different result than the original panel.  For more information on this case, tune in to our Federal Circuit IP Blog. Continue reading

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

Author: Hala S. Mourad
Editor: Aaron J. Capron

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.

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Petitioner Estopped Because References Reasonably Could Have Been Raised in Its Earlier IPR

Author: Hala S. Mourad
Editor: Cory C. Bell

In Praxair Distribution, Inc. v. INO Therapeutics, LLC., IPR2016-00781, Paper 10 (Aug. 25, 2016), the Board denied Praxair’s inter partes review petition based on both estoppel under 35 U.S.C. § 315(e)(1) and the PTAB’s discretion under § 325(d).

The petition challenged the same claims of U.S. Patent No. 8,846,112 as a prior petition filed by Praxair, but based on two new textbook references. Praxair asserted that it did not cite the new references in the earlier IPR because it did not discover them before filing. As evidence, Praxair provided a list of exemplary search results from Cardinal Intellectual Property, Inc.

The Board based its estoppel determination on whether the new references were “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.” The Board found the single search report insufficient to show that a reasonable search was conducted, highlighting the following facts:

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