In two recent final written decisions (FWDs) rendered in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board (PTAB or Board) narrowed the scope of the proceedings by terminating the proceedings with respect to claims that had already received a FWD in a prior IPR by the same petitioner. Ford Motor Company v. Paice LLC & The Abell Foundation, Inc., Case No. IPR2015-00784 (PTAB, Oct. 21, 2016) (Medley, APJ); Ford Motor Company v. Paice LLC & The Abell Foundation, Inc., Case No. IPR2015-00792 (PTAB, Oct. 25, 2016) (DeFranco, APJ). In doing so, the PTAB emphasized that once a petitioner has received a FWD against claims in one IPR, the PTAB will dismiss those claims from any future IPR involving the patent and the same petitioner.

Ford filed IPR petitions against two of Paice’s patents directed to hybrid vehicle engine management systems. For each of the two challenged patents, Ford had filed earlier IPR petitions resulting in the institution of a trial. None of those earlier IPRs had been finally decided at the time of institution of the two newer IPRs. Subsequent to institution in the later IPRs, Ford prevailed in FWDs for the earlier IPRs against each of the two patents, with a number of the claims in each patent being found unpatentable.

After the FWDs in the earlier IPRs, Paice filed its patent owner response for the later IPRs, arguing that, under 35 USC § 315(e)(1), Ford was estopped from maintaining its challenges in the newer IPRs against the claims challenged in the earlier proceedings. In each case, Ford made no arguments as to why it could not have raised the new challenges in the earlier proceeding. In the FWD for each of the newer IPRs, the PTAB agreed with Paice, dismissing the earlier-adjudicated claims from the later proceeding.

Underpinning the decision in each case was the fact that Ford had nowhere argued that it could not have reasonably raised its newer challenges in the earlier proceedings. The PTAB noted for one of the IPRs that the main prior art reference was listed on the face of the challenged patent and was cited during prosecution of the application for the patent. For the other IPR, Ford had relied on the same prior art that it had used in the earlier proceeding. Because the estoppel provisions of § 315(e)(1) prohibit maintaining a challenge against a claim based “on any ground that the petitioner raised or reasonably could have raised” in the earlier IPR, the PTAB dismissed the claims from the later IPRs.

Practice Note: Since Ford had already prevailed against the claims that the PTAB dismissed from the later proceedings, Ford did not suffer any real loss in the later IPRs. In each case, Paice had made pre-institution arguments that Ford’s later IPRs should be dismissed under § 325(d) as representing multiple unfair “bites at the apple.” Those § 325(d) arguments were unavailing.