Inter Partes Review Petitioner Estoppel Under 35 U S C 315 E 1

Summary

The Patent Trials and Appeals Board ruled that Petitioner could not maintain a subsequent proceeding with respect to the same claim on a ground that it “reasonably could have raised” in a prior proceeding despite Petitioner being successful in invalidating those claims in the prior proceeding.

Case Decision

Paice LLC sued Ford Motor Co. in the U.S. District Court for the District of Maryland for infringing U.S. Patent No. 7,237,634 (“the ’634 patent”). The ’634 patent describes a hybrid vehicle with an internal combustion engine, at least one electric motor, and a battery bank, all controlled by a microprocessor. Ford responded to the suit by filing multiple IPR petitions. The Patent Trials and Appeals Board (“Board”) instituted an IPR trial on claims 161, 215, 228, 233, 235, 236, and 237 of the ’634 patent in both IPR2014-01416 and the later-filed IPR2015-00722, which also added challenges to additional claims. In the earlier IPR proceeding, the Board found all of the challenged claims unpatentable.

Patent Owner Paice argued that, since the Board issued a final written decision in the earlier IPR, Petitioner Ford was estopped under 35 U.S.C. § 315(e)(1) from maintaining its challenge of the same claims that it challenged in the previous IPR. The Board agreed and dismissed the grounds challenging the previously-challenged claims. The Board went on to review the remaining grounds, and found the newly-challenged claims unpatentable.

Takeaway

The Board may cite 35 U.S.C. § 315(e)(1) to not rule on the patentability of claims previously addressed in an earlier final written decision, regardless of whether or not the previous challenge was successful.

Ford Motor Company v. Paice LLC & the Abell Foundation, Inc., IPR2015-00722 (September 26, 2016)