The Patent Trial and Appeal Board (PTAB) has rejected a patent owner’s argument that judicial estoppel should prevent a petitioner from making obviousness arguments in support of its petition for inter partes review (IPR).

Precision Planting, LLC filed a petition for IPR against a patent owned by Deere & Co. that is directed to a machine for sowing seeds. Precision asserted four obviousness grounds that all included the combination of a U.S. patent (Koning), which is directed to a machine for planting bulbs, with a German patent (Holdt), which is directed to a machine for planting seeds.

In its Patent Owner Preliminary Response, Deere argued that Precision was taking a position that was “diametrically opposite” to one it had taken several years earlier when Precision was prosecuting its own patent application. According to Deere, Precision had sought to overcome an obviousness rejection by arguing that the examiner was improperly combining Koning with a patent directed to a machine for planting seeds (Walters) because the two patents were not in the same field. The claims were subsequently allowed by the examiner. According to Deere, Precision was judicially estopped from arguing in its petition that Koning was in the same field as Holdt, a patent in the same field as Walters.

The PTAB rejected Deere’s arguments. The PTAB first noted that Deere had failed to cite “any authority squarely holding that judicial estoppel” applies to PTAB proceedings. The PTAB then explained that even if judicial estoppel were assumed to apply, Precision had made an adequate showing to defeat its applicability at the institution stage. According to the PTAB, the arguments that Precision made during prosecution occurred under an obviousness regime that was abrogated by the Supreme Court’s KSR decision, meaning that Precision’s position in its petition was not necessarily inconsistent with its earlier position during prosecution.

Moreover, because judicial estoppel only applies when a party was successful, the PTAB explained, the record did not show that Precision had successfully persuaded the examiner that Koning was in a different field because Precision had also made claim amendments that could have been the basis for the examiner allowing the claims to issue. Although the PTAB declined to apply estoppel at the institution stage, the PTAB allowed the parties to further address the issue during the trial stage of the IPR proceeding.

Practice Tip:

Parties to a PTAB proceeding should be aware of potential challenges arising from inconsistent arguments presented not just to the PTAB, but across proceedings before the Patent Office. When faced with such challenges, parties should assess—and leverage—the impact of changed circumstances, including changes undergone by the governing caselaw.

Precision Planting, LLC v. Deere & Co., Case IPR2019-01052, Paper 19 (Jan. 7, 2020)