New Decision Explores 315(e)(1) Estoppel

Today, the Patent Trial and Appeal Board (PTAB) added the recent Decision on Institution rendered in Dell, Inc. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 Decision Denying Institution, Paper 10, Mar. 26, 2015, to the list of Representative Orders, Decisions, and Notices on its web page. (here)  

The decision, like many recent representative decisions is rather straightforward. In this decision, the Board held that the Petitioner is estopped under 35 U.S.C. § 315(e)(1) from requesting inter partes review because: (1) the Petitioner was the same petitioner as in a prior proceeding; (2) the patent and claims challenged in both cases are the same; and (3) the prior art raised in the second petition and in the prior proceeding are the same. (The petitioner used the same prior art in a different combination to allege obviousness of the claimed subject matter). The decision held that the art of the second filing not only "could have been raised" in the first filing, but , in fact, was raised.

As discussed during yesterday's PatentsPostgrant.com webinar, the application of the "could have raised" standard in the estoppel context is required by statute. On the other hand, applying the "could have raised" standard outside of 315(e)(1) situations, such as to a follow-on petition that is not subject to estoppel is becoming worrisome for many filers.

As noted in the rehearing decision in IPR2014-00628, 3/20/15, Paper 23 (here). Some panels consider follow-on petitions as potentially abusive. That is, it is believed petitioners may hold back art, and file serial petitions to harass patentees, or use the Board's decision as a roadmap to their next filing. As explained in this decision, the statute does not require the PTAB to institute IPR. So, the thinking is even where the second filing presents a reasonable likelihood of prevailing, actual trial institution is a matter of agency discretion.   

While I don't necessarily agree with the PTAB's premise in this regard (because holding back based on 315(e)(1) would not be very smart at all, and serial filings are expensive—petitioners simply don't behave this way), the concept of discretionary institutions based upon principles of equity is an interesting one.  I don't find the hedge fund abuses equitable at all, and far worse than any follow-on petition of an interested party. In my view, to the extent the IPR statutes convey such discretion to the agency, preventing unquestionable abuses of the system is a far better use of agency discretion.