Collateral Estoppel in AIA Trial Proceedings
Inconsistency Across Related Cases is Precluded
When challenging related patents at the Patent Trial & Appeal Board (PTAB), it is not uncommon to present similar grounds of unpatentability across related filings— for example, where the claim sets are substantially similar. In such scenarios, it is expected that the PTAB will arrive at consistent determinations across the filings. Of course, there is no guarantee, that the same judge will decide all of the cases. In such instances, there is a possibility of inconsistent results, especially where the challenges are advanced at different times.
For example, party A might challenge a parent patent in an IPR, and lose on a question of obvious under 103. When a continuation patent issues a bit later, Party A may attempt to challenge the continuation on the same grounds (perhaps bolstered by a better presentation or additional evidence). In such a scenario, is the Board free to change its mind? Or is the Board collaterally estopped given the earlier determination, and the same party pursuing the same argument?
This question was explored by the Federal Circuit earlier this week in SynQor v. Vicor. (here)
At issue in SynQor was an inter partes reexamination of US Patent 7,072,190. Previously, during reexamination of two other patents in the same family, US Patents 7,564,702 and 8,023,290, the PTAB affirmed that both patents were not unpatentable in view of a particular combination of art, having determined that the references were incompatible. But in the reexamination of the ‘190 patent, the PTAB found that the same combination was compatible, and concluded that the ‘190 patent claims were unpatentable over the combination.
On appeal to the Federal Circuit, SynQor argued that “common law issue preclusion arising from the ‘702 and ‘290 patent reexaminations should have collaterally estopped the Board from finding that an artisan would be motivated to combine the combination that was earlier denied. The Federal Circuit agreed.
Reiterating principles from B & B Hardware and Maxlinear, the Federal Circuit reaffirmed that issue preclusion may apply to administrative agency decisions, so long as Congress has not made clear otherwise. The court found no statutory intent to foreclose common law estoppel in inter partes reexamination. In fact, the Court noted that “considerably more muscular” estoppel provisions were built into 35 USC 315(c) and 317(b), which prevent invalidity arguments that were raised or could have been raised during reexamination from later being raised at trial, and vice versa. Section 4607 (uncodified) also estops parties who request inter partes reexamination from challenging in any civil action a fact determined during the reexamination.
Based on these observations, the court concluded that “it is unlikely that a Congress amenable to precluding federal courts from considering fact questions traditionally submitted to a jury would object to those same conclusions binding the administrative agency that resolved the factual questions.” That Congress did not expressly apply the Section 4607 provision to subsequent reexaminations was of no matter to the court, which emphasized that courts can assume Congress intended for issue preclusion to apply except where there is evident intent otherwise.
The Court then considered whether inter partes reexamination could satisfy the elements of issue preclusion, and found that it could. This was despite the opportunity to cross-examine a declarant. Here, the court pointed out that third party requesters have the opportunity to fully participate in inter partes proceedings. For example, third party requesters may file written comments to each response filed by the patent owner, and patent owners may not have ex parte discussions on the merits with the examiner. The court also highlighted the fact that parties may present and rebut evidence through affidavits. Thus, though inter partes reexamination is not formally adversarial, it “provides adequate adversarial participation.”
The dissent argued that inter partes reexamination is an “inquisitorial” proceeding and collateral estoppel should not be applied. The dissent discussed that the examiner is not bound by requester rejections and arguments, and may formulate their rejections and positions. While there are certainly points to be emphasized on both sides of this debate, with inter partes reexamination no longer available, it is largely academic.
As for AIA trials, based upon this ruling, there is little doubt that collateral estoppel will apply in the same context. Of course, given the crackdown on serial petitioning, and 325(d) it is unlikely that this issue would ever be raised for a single patent. Rather, it is more likely to be raised in the hypothetical outlined above (i.e., where Party A is challenging related patents at different times). Patent Owners facing sporadic challenges to their portfolio from a same party may find some value in leveraging this reexamination decision should a challenger try to rehabilitate failed arguments in a later filing.
Scott A. McKeown is an author of the Patents Post Grant