Stoll: Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint

In our newest Patently-O Patent Law Journal article, former Commissioner of Patents Robert Stoll considers and rejects the call for legislative reforms that would reduce the estoppel associated with post-grant review filings. Stoll writes:

Critics of this [estoppel] provision seek to strike reasonably-could-have-raised estoppel as applied to subsequent civil litigation. This position is mistaken, because limiting the estoppel only to issues actually raised in the post-grant review would encourage petitioner gamesmanship to the detriment of (i) the courts, whose busy dockets will be burdened with more complex and time-consuming validity questions that the petitioner reasonably could and should have raised in the post-grant review, (ii) the USPTO, whose post-grant review decisions will lose their finality with respect to the same petitioner vis-à-vis a later court challenge, and (iii) the patent owner, who will be forced to defend the validity of the same patent claim against the same petitioner in piecemeal proceedings rather than in a single forum. Post-grant review estoppel, as originally enacted, should be maintained for these and other reasons discussed in this Article.

The article is especially timely as we expect for Congress to consider several "technical amendment" proposals over the next few weeks for inclusion within an omnibus bill.  

Read the article: Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint, 2012 Patently-O Patent Law Review 1 at  /media/docs/2012/11/stoll.2012.estoppel.pdf

 

11 thoughts on “Stoll: Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint

  1. I don’t need to keep up. I know what “any” means and the fact that it is used to qualify the noun – that it is expressly that qualification that should remove his lack of understanding.

    Better trolling please.

  2. What part of “any” do you not understand?

    The meaning of the noun it qualifies. Which is what he’s been talking about the whole time.

    Please try to keep up.

  3. anon, put some meat on those bare bones.

    If a particular piece of prior art is not asserted but was known and could have been asserted, I would agree that the petitioner is estopped to asserted that art later in a court action. But is the petitioner required to conduct a search? And, if he does not, is he estopped for any art that could reasonably have been found if he had conducted a search or at least a more thorough search?

    The statute is not clear on these points.

  4. Paul, I know what the statute says.  My question goes to what it means.

    By "grounds," do they refer to legal theories or evidence?  What I think is that given certain evidence, the petitioner would have to allege that the claims were invalid based upon every legal theory available.  But if new evidence that was not available, or reasonably available, is later discovered, I don't think the statute says that the are estopped.  That is my read of the statute; but I wanted to know whether that is consistent with your views too?

  5. Ned, the PGR estoppel is statutory not just res judicata and is:
    “(e) Estoppel-
    (1) PROCEEDINGS BEFORE THE OFFICE- The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.
    (2) CIVIL ACTIONS AND OTHER PROCEEDINGS- The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.”

  6. Paul, Do you think the estoppel is the equivalent of res judicata so that even if one discovers new prior art, that one cannot assert it in a defense in court?

    Is that your concern?

    Otherwise, I cannot see a PGR raising a 102 issue over particular art, but reserving a 103 defense (over the same art) for the courts, and also potentially ignoring obvious 101 or 112 issues, reserving them for the court as well.

    That doesn’t make sense to me.

    However, I do share your concern about evidence that was not reasonably available and which is not cumulative. If one cannot use that in a defense in court, then there could be a problem.

  7. To clairify something I said above, it is the AIA 8 year long “SEC. 18 TRANSITIONAL PROGRAM FOR COVERED BUSINESS METHOD PATENTS” form of PGR [which is already in effect, and NOT limited only to brand new patents] that limits estoppel to issues actually raised. Why is this TPCBM PGR not far more of a threat for “piecemeal proceedings” than regular PGR? I.e. if this estoppel is good enough for this TPCBM PGR, why is it not even more appropriate for regular PGR?
    Furthermore, patents and publications are things one can find without needing discovery from patent owners, unlike other issues theoretically possible to raise, and thus subject to estoppel in PGR, like prior product details, on sales, public uses, etc.

  8. Bob Stoll and Bob Armitage are on opposite sides of this arguement, and I would hope to remain in the good graces of both AIA experts.* However, I think that Bob Armitage has the better argument on this issue.
    First, since no PGR can be brought after 9 months from the date a patent issues, how can a PGR possibly be used in “piecemeal proceedings”? There is simply no time for that, and the Board could even combine PGR’s that close in time that are from the same party in interest [which has to be disclosed].

    Secondly, the present estoppel for PGR is so all-inclusive of any possible issue, whether known or asserter or not, that it effectively deprives anyone threatened by a patent owner of any possible defense other than non-infringement when subsequently sued or in any other proceeding. Thus making PGR nearly suicidal for anyone to use. [Unlike IPR's and ex parte reexaminations, where estoppel is limited to only additional prior art patents or publications which could reasonably have been found, and unlike method claim PGR's where estoppel is limited to the issues actually raised or considered.]

    *[Also, I think this will be a moot issue for some time, as this issue seems too substantive for a "technical corrections" bill, and PGR is only for patents based on applications filed after next March 16.]

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