Impact of Notice-of-Allowance in Parallel IPR

by Dennis Crouch

ESIP Series 2, LLC v. Puzhen Life USA, LLC (Fed. Cir. 2020)

In its original decision, the Federal Circuit affirmed a PTAB IPR decision invalidating ESIP’s claimed essential-oil-diffuser and “method for introducing a scent into breathable air,” US9415130; IPR2017-02197.  ESIP then petitioned for rehearing en banc and the Federal Circuit has now denied that petition as well. [ESIP-petition][Original Fed.Cir. Decision]

In the petition, the patentee focuses on a family-member (continuation) patent application that had recently received a notice of allowance after the examiner expressly considered the same prior art being applied in the inter partes review.  (That application is now US9943621).  Thus, ESIP asked the following question:

Whether a Notice of Allowability in a child application of a patent in an Inter Partes Review proceeding, facing the same prior art relied upon in the Inter Partes Review, is objective evidence that must be properly considered by the Board.

During the IPR, the PTAB refused to give any weight to the examiner’s decision in a parallel case–reasoning that it should not give weight to a collateral decision since it gives no weight to the examiner’s original decision.

If the Office’s allowance of the very claims at issue does not render the challenged claims non-obvious, it is unclear why the Office’s allowance of merely similar claims would do so.

PTAB Final Decision. On appeal, the Federal Circuit panel decision did not address the issue even though it had been fully briefed. Now, the Federal Circuit has also refused to consider the issue via rehearing or en banc.

So, the question remains: What deference or consideration should be given to a contemporary examiner determination involving the same patentee and the same prior art? 

The issue here is similar to what the PTAB has been working through over the past five years regarding prior decisions by Article III courts, just closer to home.

6 thoughts on “Impact of Notice-of-Allowance in Parallel IPR

  1. 5

    Different claims in the allowed case, so why should PTAB consider what the examiner in that case thought of the refs before PTAB?

    And if those claims aren’t different, why didn’t examiner make a statutory d.p. rejection?

    I don’t understand why this is a thing.

  2. 4

    If the same claims by the same inventors are maintained alive in more than one application or patent they should have a double patenting rejection.
    In spite of lack of PTO examiner-management and examiner consistency, if a patent issues with claims that are really the same as claims that were removed from another patent by an IPR final decision, and those claims are sued on, that suit should get short shrift from the court, if not sanctions, on more than one ground.

    1. 4.1

      Left hand right hand — which hand do you want to sanction?

  3. 3

    In my case, after I burned my patent on CSPAN, President Trump appointed Director Iancu to replace Michelle Lee and Joe Matal as Director of the USPTO. The presiding APJ (Kevin Cherry) who was invalidating all my patents was replaced (by Francis Ippolito).

    I finally won a denial of institution on my 4th patent, where APJ Ippolito discussed the examiner consideration of the IPR decisions invalidating the parent patents (which had been authored by APJ Cherry):

    Further, we note that multiple Notices of Allowance were issued during prosecution of the ’779 patent, several of them after applicants submitted various documents from other related proceedings before the Board, including the petitions in PGR2016-00030 and PGR2016-00031. Ex. 1008, 25–30, 37–38. These Petitions contained obviousness challenges against claims of the ’749 patent and the ’282 patent based on similar arguments and the same art (i.e., Saggio, Cooper, Weir, Donaldson, and Lee) at issue in the instant proceeding. The Examiner appears to have considered them. Id. at 20 The Examiner’s reasoning for allowance remained unchanged after considering all the prior art of record, including the petitions filed in PGR2016-00030, PGR2016-00031, Saggio, Cooper, Lee, Donaldson, ZORBZ, Weir, and Pomerantz. Ex. 1008, 17.

    link to joshtheballoonguy.org

    Here, the PTAB did defer to the examiner, but only because they were getting heat from the press and the Whitehouse.

  4. 2

    What deference or consideration should be given to a contemporary examiner determination involving the same patentee and the same prior art?

    The PTAB panels can do whatever they want. They just copy and paste the General Plastics factors (now the Advanced Bionics factors), state that some “weigh” in favor of denial and others are “given little weight”, and “we are not persuaded”, and “we agree with petitioner”…

    Then they institute and invalidate.

    Issued U.S. patents are completely unpredictable. It does not matter how thorough the examination is, the PTAB will invalidate most of them on subjective “it would have been obvious” declarations. They will overrule examiners, SPEs, TQAS, OPQA, CRU, district courts, juries, prior PTAB panels, and even the Federal Circuit.

    They are completely out of control and unaccountable.

  5. 1

    Thanks for covering this Dennis. The USPTO is 100% political. In my case the PTAB finally deferred to the examiner, but it appears my victory was entirely a result of the political pressure I was able to muster.

    Yes, the examiner was correct, and I earned my patents. But that is not what matters at the PTAB.

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