PTAB Avoids Triggering Estoppel by Issuing Concurrent Final Written Decisions

Written by Scott Raevsky and Mark Rubinshtein, Ph.D.

The Patent Trial and Appeal Board issued concurrent final written decisions upholding the validity of all challenged claims of U.S. Patent No. 8,141,154 in Palo Alto Networks, Inc. v. Finjan. Inc. IPR2015-01979, Paper 62 (P.T.A.B., March 15, 2017) and IPR2016-00151, Paper 51 (P.T.A.B., March 15, 2017). Despite these two cases having staggered institution dates, the Board decided them both on the same day to avoid triggering the estoppel provision of the AIA (35 U.S.C. § 315(e)(1)).

On September 25, 2015, Petitioner Palo Alto Networks (“Palo Alto”) filed a first petition (the ’979 IPR) to institute IPR. Palo Alto subsequently filed a second IPR petition (the ’151 IPR) on the same patent on November 5, 2015. The Board later instituted the ’979 IPR on March 21, 2016 and instituted the ’151 IPR on April 10, 2016.

Under the estoppel provision of the AIA, if Palo Alto’s first IPR (the ’979 IPR) had resulted in a final written decision before its second IPR, Palo Alto may have been estopped from maintaining its second IPR. Since the AIA requires the Board to issue a final written decision within one year of institution in most instances, estoppel was a real possibility. Both parties briefed the issue of whether estoppel would prevent the Board from issuing a final written decision in the later ’151 IPR in view of the earlier due date for a final written decision in the ’979 IPR.

Palo Alto argued that estoppel would not apply because the Board remains authorized under 35 U.S.C. § 317(a) to proceed to a final written decision even if no petitioner remains in the IPR. However, the patent owner contended that in the interest of judicial economy, the later ’151 IPR should be terminated because Palo Alto could have raised its grounds in its earlier petition.

The Board avoided the estoppel issue altogether by issuing final written decisions in both proceedings on the same day, stating that it “need not decide what effect, if any, the estoppel provisions of § 315(e)(1) have on [its] ability to render this decision.” In view of this case, parties should be aware of the Board’s power to avoid estoppel by issuing concurrent final written decisions.