Addressing estoppel in a post-grant review (PGR) proceeding, the Patent Trial and Appeal Board (PTAB) denied a patent owner’s request to file a motion to terminate the proceeding in view of the final written decision in a PGR proceeding for a related patent. Telebrands Corp. v. Tinnus Enterprises, LLC, Case No. PGR2017-00015 (PTAB, Mar. 26, 2018) (Cherry, APJ).

Tinnus, the patent owner, requested permission to file a motion to terminate a PGR proceeding in view of a final written decision involving a related patent. Tinnus argued that the only issue in the current PGR proceeding was whether claim language reciting “press-against” was indefinite and that the PTAB had concluded that the same language was not indefinite in the prior PGR proceeding. Tinnus argued that (1) the statutory estoppel provision of 35 USC § 325(e)(1) barred the current proceeding, and (2) the PTAB should exercise its discretion, terminate the proceeding and vacate the institution decision.

The PTAB disagreed that termination was appropriate and denied Tinnus’s request to file a motion to terminate. First, the PTAB indicated that the estoppel language of § 325(e)(1) only applies to “a claim of a patent” for which a final written decision has issued, and notwithstanding the similarities between the claims in the current proceeding and the claims in the proceeding where the final written decision issued, § 325(e)(1) did not apply because no final written decision had issued for any claims at issue in the current proceeding.

Second, the PTAB addressed the reasons for exercise of discretion advanced by Tinnus, without deciding whether such discretion exists. Specifically, the PTAB found that significant resources had already been expended in the current proceeding, and the PTAB was not persuaded that there would be substantial savings by terminating the proceeding. The PTAB also found that interests of fairness and due process weighed against termination because Telebrands had not had the opportunity to address new evidence submitted by Tinnus. The PTAB denied Tinnus’s request to file a motion to terminate but granted Tinnus the opportunity to file a supplemental brief further addressing the issues of estoppel and discretionary termination.