The recent settlement of the Rainbow Loom Post Grant Review proceeding(PGR2014-00008) represents an interesting opportunity to consider whether PGR represents a viable opportunity under limited circumstances.
To date, the widespread comfort of the bar with PTAB proceedings has led to record number of filings, first with IPRs, and later with CBMs. For patents implicating financial products and services, CBMs represent a useful vehicle for forcing consideration of a broad array of issues including utility and written description support. The Rainbow Loom PGR proceeding reminds us that, for patents with the required AIA filing dates, PGR certainly affords the same flexibility as offered by CBMs to consider a broader array of issues beyond those available in IPRs. However, the statutory estoppel provisions still give all practitioners serious pause in deciding to consider PGR over an IPR. While the estoppel provisions in both 35 U.S.C. §315(e) and 35 U.S.C. §325(e) both include language specifying that the estoppel attaches to any ground that was “raised or reasonably could have been raised,” the broader review permitted under PGR would seemingly attach to arguments available under 35 U.S.C. §101 and 35 U.S.C. §112. As a result of this estoppel, IPR may provide the best balance of preserving some issues for trial while allowing the PTAB to engage in a detailed technical inquiry into published prior art under 35 U.S.C §102 and 103.